Zhadanov v EUIPO (PDF Expert) (EU trade mark - Judgment) [2019] EUECJ T-404/18 (24 September 2019)

Judgment Background to the dispute On 18 January 2017, the applicant, Igor Zhadanov, 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 European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)). Registration as a mark was sought for the word sign PDF Expert. The goods in respect of which registration was sought are in Class 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 to the following description: ‘Computer application software for personal computers, mobile phones and portable electronic devices, namely, software for viewing, editing and managing pdf documents’. By decision of 18 July 2017, the examiner refused registration of the mark applied for in respect of the goods referred to in paragraph 3 above on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001) and Article 7(3) of Regulation No 207/2009 (now Article 7(3) of Regulation 2017/1001). On 16 August 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the examiner’s decision. By decision of 18 April 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. The Board of Appeal held that the relevant public in this case consisted both of the general public and a professional public and decided to rely on the public perception in Member States where English is an official language, namely Ireland, Malta and the United Kingdom (paragraphs 14 to 18 of the contested decision). The Board of Appeal then found that the mark applied for was descriptive of the goods covered for the purposes of Article 7(1)(c) of Regulation 2017/1001 (paragraphs 19 to 27 of the contested decision) and devoid of distinctive character within the meaning of Article 7(1)(b) of that regulation (paragraphs 28 to 35 of the contested decision). Furthermore, it dismissed the claim that the mark applied for had acquired distinctive character through the use which had been made of it, for the purposes of Article 7(3) of Regulation 2017/1001 on the basis that the documents provided by the applicant did not establish that the relevant public perceived that mark as an indication of the commercial origin of the goods at issue (paragraphs 36 to 56 of the contested decision). Forms of order sought The applicant claims that the Court should: – annul the contested decision; – register the mark applied for; – order EUIPO to pay the costs. EUIPO contends that the Court should: – dismiss the application; – order the applicant to pay the costs. Law In the application, the applicant disputes neither the descriptive character of the mark applied for nor that it is devoid of any distinctive character and relies on a single plea in support of his action, alleging infringement of Article 7(3) of Regulation 2017/1001. It must be borne in mind that Article 7(3) of Regulation 2017/1001 does not provide an independent right to have a trade mark registered. It is an exception to the grounds for refusal listed in Article 7(1)(b) to (d) of Regulation 2017/1001 (see judgment of 6 July 2011 , Audi and Volkswagen v OHIM (TDI) , T‑318/09, EU:T:2011:330, paragraph 40 and the case-law cited). Under Article 7(3) of Regulation 2017/1001, the absolute grounds for refusal contained in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, as a consequence of the use which has been made of it, the mark has become distinctive in relation to the goods or services for which registration is requested. In the circumstances referred to in Article 7(3) of Regulation 2017/1001, the fact that the sign which constitutes the mark in question is actually perceived by the relevant public as an indication of the commercial origin of goods or services is the result of an economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) of Regulation 2017/1001, which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader (judgments of 3 December 2003, Audi v OHIM (TDI) , T‑16/02, EU:T:2003:327, paragraph 50, and of 14 December 2017, bet365 Group v EUIPO — Hansen (BET 365) , T‑304/16, EU:T:2017:912, paragraph 25). In the first place, the acquisition of distinctive character through use of a mark requires that the relevant public identifies the goods or services concerned as originating from a particular undertaking because of the mark. That identification must be as a result of the use of the sign as a trade mark and thus as a result of the nature and effect of it, which make it capable of distinguishing the goods or services concerned from those of other undertakings (see judgment of 29 September 2010, CNH Global v OHIM (Combination of the colours red, black and grey for a tractor) , T‑378/07, EU:T:2010:413, paragraphs 28 and 29 and the case-law cited; see also by analogy, judgment of 7 July 2005, Nestlé , C‑353/03, EU:C:2005:432 , paragraphs 26 and 29). In the second place, in order to register a trade mark on the basis of Article 7(3) of Regulation 2017/1001, the distinctive character acquired through the use of the mark must be demonstrated in the part of the European Union in which it did not have that character for the purposes of Article 7(1)(b) to (d) of that regulation (see judgment of 25 July 2018, S ociété des produits Nestlé and Others v Mondelez UK Holdings & Services , C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596 , paragraph 75 and the case-law cited). In the third place, a mark must have become distinctive through use before the application was filed (see judgment of 29 September 2010, Combination of the colours red, black and grey for a tractor , T‑378/07, EU:T:2010:413, paragraph 34 and the case-law cited). In the fourth place, in determining whether the sign at issue has acquired distinctive character as a consequence of the use which has been made of it, an overall assessment must be made of the evidence that the trade mark has come to identify the goods or services concerned as originating from a particular undertaking, and thus to distinguish those goods and services from those of other undertakings. For the purposes of that assessment, account may be taken of, inter alia: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons which, because of the mark, identifies the goods or services concerned as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 29 September 2010, Combination of the colours red, black and grey for a tractor , T‑378/07, EU:T:2010:413, paragraphs 31 and 32 and the case-law cited). In the fifth place, the distinctive character of a sign, including that acquired through use, must be assessed in relation, first, to the goods or services in respect of which registration of the mark is applied for and, secondly, to the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect (see judgment of 28 October 2009, BCS v OHIM — Deere (Combination of the colours green and yellow) , T‑137/08, EU:T:2009:417, paragraph 29 and the case-law cited). The question of whether in the present case the Board of Appeal erred in finding that the mark applied for could not be registered under Article 7(3) of Regulation 2017/1001 must be examined in the light of those considerations. In the present instance, as stated in paragraph 14 of the contested decision, given the nature of the IT goods at issue, the relevant public includes both a professional public and the general public. Furthermore, it follows from paragraph 18 of the contested decision that the use of the trade mark applied for must be considered in relation to the public of the Member States in which English is an official language, namely Ireland, Malta and the United Kingdom, in respect of which it was not found that the trade mark applied for was inherently distinctive and in respect of which the acquisition of distinctive character through use was claimed, in accordance with the case-law referred to in paragraph 14 above. Those findings are free of error and may be upheld. Furthermore, they are not disputed by the applicant. The applicant does however challenge the Board of Appeal’s assessment of the evidence submitted to demonstrate that the mark has acquired distinctive character through use, relying on three arguments in that regard. First, the applicant claims that the Board of Appeal failed to take sufficient account of the fact that the goods covered by the trade mark applied for were computer applications (‘apps’), which are ‘rather unconventional goods’ falling between goods and services, in respect of which traditional evidence of distinctiveness acquired through use, such as statements by professional associations or market studies, does not readily apply. The applicant also challenges the Board of Appeal’s finding that the goods in respect of which the mark was applied for were not limited to an app. In that regard, it should be noted that the case-law on evidence of distinctive character acquired through use (see paragraph 16 above) does not distinguish between goods and services, and in particular does not make any distinction as to the types of evidence corresponding to each of those categories. In the present case, the Board of Appeal cannot be criticised for recalling the importance of statements by professional associations and market studies and finding that such statements had not been provided (see paragraph 49 of the contested decision), given that in accordance with settled case-law, such statements constitute direct evidence of distinctive character acquired through use both for goods and for services (see judgment of 7 December 2017, Colgate-Palmolive v EUIPO (360°) , T‑332/16, not published, EU:T:2017:876 , paragraph 46 and the case-law cited) and thus also for goods such as apps which can allegedly, as claimed by the applicant, be equiparated, by virtue of some of their characteristics, with services. It also follows that although the Board of Appeal erred in interpreting too widely the range of goods applied for under the trade mark, as extending beyond apps, it cannot be criticised either for finding in the present case that there is no direct evidence of distinctive character acquired through use by way of statements by professional associations or market studies. Secondly, the applicant claims that the Board of Appeal wrongly disregarded the evidence in which the mark applied for is linked to an icon or to the name of the company operated by the applicant, Readdle Inc. According to the applicant, it is settled case-law that for a mark to acquire distinctive character through use, it need not necessarily have been used independently, and the acquisition of distinctive character may result from its use as part of another registered trade mark or from its use in conjunction with another registered trade mark. The case-law cited by the applicant indicates that the acquisition of distinctive character of a mark may be as a result either of the use, as part of a registered trade mark, of a component thereof or of the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceives the good or service, designated exclusively by the mark applied for, as originating from a particular undertaking (see judgment of 17 July 2008, L & D v OHIM , C‑488/06 P, EU:C:2008:420 , paragraph 49 and the case-law cited; see also, by analogy, judgment of 7 July 2005, Nestlé , C‑353/03, EU:C:2005:432 , paragraph 30). However, although the acquisition of distinctive character may result both from the use, as part of a registered trade mark, of a component thereof and from the use of a separate mark in conjunction with a registered trade mark, the fundamental condition is always that, as a consequence of that use, the sign for which registration as a trade mark is sought may serve to identify, in the perception of the relevant class of persons, the goods to which it relates as originating from a particular undertaking. It follows that in order to register a trade mark which has become distinctive in consequence of the use which has been made of it within the meaning of Article 7(3) of Regulation 2017/1001, regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by that mark, as opposed to any other mark which might also be present, as originating from a particular undertaking (judgment of 7 December 2017, 360° , T‑332/16, not published, EU:T:2017:876 , paragraph 43; see also, by analogy, judgment of 7 July 2005, Nestlé , C‑353/03, EU:C:2005:432 , paragraph 30). As to the figurative element representing the icon for the app in this case, given that the applicant indicated at the hearing, in response to a question from the General Court, that the icon was not a registered trade mark, either alone or in conjunction with other elements, in accordance with the case-law referred to in paragraph 25 above, the use of the word element ‘pdf expert’ in combination with that icon is not sufficient to establish that the element ‘pdf expert’ has acquired distinctiveness through the use which has been made of it. Nor is it possible to apply, for that same reason, the solution accepted in the judgment of 15 December 2016, Mondelez UK Holdings & Services v EUIPO — Société des produits Nestlé (Shape of a chocolate bar) (T‑112/13, not published, EU:T:2016:735 , paragraph 99), first cited by the applicant in his request for an oral hearing, in which the General Court found that a mark could be deemed to be used as a means of identification when it was recognised by the relevant public as referring to another trade mark — which is not present in this case — designating the same goods and used in conjunction with the contested trade mark. Even if the icon at issue were a figurative trade mark held by the applicant, the evidence submitted by the applicant indicates that the icon is predominant, and most often used completely separately from the word element ‘pdf expert’, and thus does not confer distinctiveness on that element in itself, but rather renders that element explanatory of the icon, given the descriptive nature of that element (see, to that effect, judgments of 6 July 2011, TDI , T‑318/09, EU:T:2011:330, paragraphs 69 and 72, and of 9 July 2014, Pågen Trademark v OHIM (gifflar) , T‑520/12, not published, EU:T:2014:620, paragraphs 43 and 44), as noted by the Board of Appeal in the contested decision (paragraphs 19 to 27), not disputed by the applicant in the application and challenged for the first time in an unsubstantiated manner at the hearing. That finding is not affected by the judgment of 14 December 2017, BET 365 (T‑304/16, EU:T:2017:912), referred to by the applicant. In the case which gave rise to that judgment, the General Court merely applied the case-law referred to in paragraph 25 above, and held that the use of the ‘bet365’ element in combination with colours, fonts, figurative elements or other word elements could not be regarded as inherently incapable of helping to show that the word mark BET 365 had acquired distinctive character through use (judgment of 14 December 2017, BET 365 , T‑304/16, EU:T:2017:912, paragraph 39). Moreover, while the General Court held that it could hardly be disputed that use as a trade mark of the figurative mark including the element ‘bet365’ established a link between the word mark BET 365 and the applicant’s goods or services, that outcome could be explained by the fact that that case concerned a figurative mark comprised of a word element that in itself constituted the trade mark applied for, whereas, in the present case, the figurative element consisting of the icon in question is used in conjunction with the word element ‘pdf expert’, which constitutes the trade mark applied for. Regarding the word element ‘readdle’ referred to by the applicant at the hearing as constituting a registered trade mark, it should be noted that that element refers to the company operated by the applicant, which markets the app in question. Thus, the element ‘readdle’ establishes that the goods concerned originate from that company, and therefore the indication of origin of those goods results from that information, not from the element ‘pdf expert’ used in combination with the element ‘by readdle’ (see, to that effect, judgment of 9 July 2014, gifflar , T‑520/12, not published, EU:T:2014:620, paragraph 45). The Board of Appeal was therefore correct in finding, in paragraph 45 of the contested decision, that the evidence submitted by the applicant including the icon, the element ‘pdf expert’ and the element ‘by readdle’ did not prove that the trade mark applied for was, as such, recognised as an indication of commercial origin. Third, the applicant maintains, on the basis of the case-law according to which evidence of acquired distinctiveness must be examined as a whole, that the Board of Appeal did not give sufficient weight to the evidence provided. In particular, the applicant complains that the Board of Appeal failed to sufficiently take into account numerous statements by independent IT professionals and press articles from well-known media produced by the applicant and that it required the applicant to produce evidence usually regarded as most relevant for the purposes of proving distinctive character acquired through use, such as statements by professional associations or market studies. The applicant also complains that the Board of Appeal did not take into account search statistics for the terms ‘pdf expert’ as significant evidence on the ground that those terms had been searched as generic terms rather than to find the applicant’s app. Admittedly, it follows from the case-law, pertinently cited by the applicant that an overall assessment should be made of the evidence indicating that the mark has come to identify the goods or services concerned as originating from a particular undertaking (see paragraph 16 above). However, it also follows from the case-law that, in the context of that overall assessment, greater weight may be given to certain evidence. In particular, sales figures and advertising materials can be regarded only as secondary evidence which may support, where relevant, direct evidence of distinctive character acquired through use, such as that provided by surveys or market research and by statements from trade and professional associations (see judgment of 7 December 2017, 360° , T‑332/16, not published, EU:T:2017:876 , paragraph 46 and the case-law cited). In the present case, contrary to what the applicant contends, although the Board of Appeal did not admit statements from independent third parties, namely IT professionals with no contractual ties to the applicant, as ‘direct evidence’ within the meaning of the case-law referred to in paragraph 33 above, it did rightly take those statements into account as relevant evidence, noting that they were not sufficient in themselves and that further evidence was required, as apparent from its finding that the statements were made exclusively by professionals (paragraph 50 of the contested decision) and its subsequent assessment of the other evidence submitted by the applicant. The statements at issue set out the position of professionals, as indeed expressly noted in some, so notwithstanding general reference in some statements to the term ‘users’ of the app, they provide direct evidence of the opinion of the professional public only and are therefore insufficient, since the relevant public also includes the general public (see, to that effect judgments of 12 September 2007, Glaverbel v OHIM (Texture of a glass surface) , T‑141/06, not published, EU:T:2007:273, paragraph 44, and of 18 October 2016, Raimund Schmitt Verpachtungsgesellschaft v EUIPO (Brauwelt) , T‑56/15, EU:T:2016:618 , paragraph 138). It also follows that the Board of Appeal cannot be criticised for finding that the applicant failed to conduct a survey to demonstrate that the trade mark applied for is perceived as such by the relevant public in its entirety (paragraph 51 of the contested decision). Furthermore, in finding that the acquisition of distinctive character through use had not been proven, the Board of Appeal did not rely solely on the absence of that direct evidence and went on to examine secondary evidence. In that regard, it should be noted, first of all, that the press articles examined in the contested decision (paragraph 54), the press releases referred to in the application and the screenshots included in the file and specifically referred to at the hearing are promotional in nature. They indicate all the benefits and potential of the applicant’s app, and usually reproduce the applicant’s own advertising messages. It is settled case-law that advertising materials can be regarded only as secondary evidence which may support, where relevant, the direct evidence of distinctive character acquired through use. Advertising materials as such do not demonstrate that the public targeted by the goods or services in question perceives the sign as an indication of commercial origin (judgments of 12 September 2007, Texture of a glass surface , T‑141/06, not published, EU:T:2007:273, paragraph 41, and of 24 February 2016, Coca-Cola v OHIM ( Shape of a contour bottle without fluting) , T‑411/14, EU:T:2016:94 , paragraph 84). Thus it cannot be inferred in the present case, in the absence of any further indication and even though certain documents contain the terms ‘pdf expert’ only, that the general public will perceive these terms as indicative of the commercial origin of the goods. This is particularly true in the present case given that the publications concerned, with the exception of one, are mainly aimed at a specialised audience. As for the statistics on internet searches for the keyword ‘pdf expert’, it has admittedly been found that such statistics could be capable of demonstrating that a mark has acquired distinctive character through use (see, to that effect, judgment of 14 December 2017, BET 365 , T‑304/16, EU:T:2017:912, paragraph 46). However, that possibility has only been accepted in special circumstances, such as where the majority of the marks in the sector are inherently descriptive or clients were generally regular customers, permitting the inference that clients used the mark at issue to identify the applicant’s goods or services, as opposed to goods or services offered by its competitors (see, to that effect, judgment of 14 December 2017, BET 365 , T‑304/16, EU:T:2017:912, paragraphs 44 and 46). It has not been claimed, let alone established, that such circumstances exist in the present case. Furthermore, although the searches at issue appear to establish a certain level of awareness of the trade mark applied for, such awareness of the mark does not amount to distinctive character acquired through use, where the mark is recognised by the relevant public as an indication of commercial origin (see, to that effect, judgment of 21 May 2014, Bateaux mouches v OHIM (Bateaux-Mouches) , T‑553/12, not published, EU:T:2014:264, paragraph 70). That is true a fortiori in the present case, given that the applicant does not specifically contest the finding of the Board of Appeal (paragraph 52 of the contested decision), according to which the other terms searched and reported in those search statistics, including ‘pdf editor mac’ or ‘pdf reader app’ were used as generic terms referring to the type of goods sought. It follows from all the foregoing that the Board of Appeal was correct in finding that the applicant had failed to establish that the searches in question had been performed in order to find his app and therefore constituted evidence that the mark applied for had acquired distinctive character through use (paragraph 52 of the contested decision). Finally, it may be noted that the applicant does not contest the findings of the Board of Appeal regarding the evidence attesting, specifically through market share, to significant use of the applicant’s app (paragraphs 47 and 48 of the contested decision), but not demonstrating that the purchasers concerned perceive the sign applied for as indicative of commercial origin. The applicant merely makes reference to the evidence as a whole and offers no explanation as to how it establishes use of the sign as a trade mark. With regard to the sign acquiring distinctive character through use, identification by the relevant class of persons of the goods as originating from a given undertaking must be as a result of the use of the sign as a trade mark. The requirement that the mark must be used ‘as a trade mark’ should be understood as referring to use of the mark for the purposes of identification, by the relevant class of persons, of the product or service as originating from a given undertaking and not every use of the mark amounts necessarily to use as a trade mark (see judgment of 29 January 2013, Germans Boada v OHIM (Manual tile-cutting machine) , T‑25/11, not published, EU:T:2013:40, paragraph 85 and the case-law cited; see also paragraph 13 above). In the light of the foregoing, none of the evidence examined, considered in isolation or altogether, is sufficient to establish that the mark applied for has acquired distinctive character through its use with the relevant public as a whole. It follows that the sole plea alleging infringement of Article 7(3) of Regulation 2017/1001 must be rejected and, accordingly, the appeal dismissed in its entirety, without it being necessary to rule on the admissibility of the second head of claim, disputed by EUIPO. 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, he must be ordered to pay the costs, in accordance with the form of order sought by EUIPO. On those grounds, THE GENERAL COURT (Ninth Chamber) hereby: 1. Dismisses the action; 2. Orders Igor Zhadanov to pay the costs. Gervasoni Kowalik-Bańczyk Mac Eochaidh Delivered in open court in Luxembourg on 24 September 2019. E. Coulon D. Gratsias Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. 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