Innovation First v OHIM (NANO) (Judgment) [2015] EUECJ T-379/13 (10 February 2015)

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(Community trade mark — Application for Community word mark NANO — Right to be heard — Obligation to state reasons — Examination of the facts of the Office’s own motion — Absolute ground for refusal — Descriptiveness — Article 7(1)(c) of Regulation (EC) No 207/2009)

Innovation First, Inc., established in Greenville, South Carolina (United States), represented by J. Zecher, lawyer,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Poch, acting as Agent,

ACTION brought against the decision of the First Board of Appeal of OHIM of 19 April 2013 (Case R 1271/2012-1), relating to an application for registration of the word sign NANO as a Community trade mark,

composed of H. Kanninen, President, I. Pelikánová (Rapporteur) and E. Buttigieg, Judges,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the Court, to give a ruling without an oral procedure,

1 On 7 June 2010, the applicant, Innovation First, Inc., filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

3 The goods in respect of which registration was sought are in Classes 9 and 28 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 9: ‘Robots for educational use, namely teaching robots, and structural parts therefore; kits for constructing teaching robots; batteries for the aforementioned goods; cases adapted for the aforementioned goods; computer programs for designing and remotely controlling motorized toys; all aforementioned goods except for humanoid robots, kits for constructing humanoid robots and goods specially adapted to humanoid robots’;

– Class 28: ‘Toy robots; toy robot building kits; toy robots for educational use and structural parts therefore; robots for hobby use, namely robots for entertainment use, and structural parts therefore; kits for constructing robots for entertainment use; toy bridges, toy building structures and toy vehicle tracks; cases adapted for the aforementioned goods; all aforementioned goods except for humanoid robots, kits for constructing humanoid robots and goods specially adapted to humanoid robots’.

4 By decision of 22 June 2012, the examiner rejected the application for registration in so far as it covered the goods listed in paragraph 3 above. According to the examiner, for those goods, the mark would be perceived by the relevant public as indicative either of their small size, or of the fact that they were based on nanotechnology. Consequently, in the examiner’s opinion, as far as the goods listed in paragraph 3 above were concerned, the trade mark applied for was descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009 and devoid of any distinctive character within the meaning of Article 7(1)(b) of the regulation.

5 On 10 July 2012 the applicant lodged an appeal with OHIM under Articles 58 to 64 of Regulation No 207/2009 against the examiner’s decision.

6 By decision of 19 April 2013 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. First of all, it held that the relevant public was composed of both average consumers and professionals who handle information technology and who speak Spanish, Danish, German, English, French, Italian, Portuguese and Finnish. Secondly, it found that the trade mark applied for means ‘extremely small’ or ‘involving the use of nanotechnology’, notwithstanding the fact that ‘nano’ was sometimes used as a prefix. Thirdly, the Board of Appeal noted that the term ‘nano’ was not unusual in relation to the goods listed in paragraph 3 above, since it was going to be interpreted by the relevant public as meaning that those goods were small or based on nanotechnology. In that regard, it stated that the fact that the goods are small in dimension was a desired characteristic in the goods at issue. Moreover, in response to the applicant’s argument that the extremely small size of the goods would make their handling and observation very difficult, even dangerous, the Board of Appeal stated that, while the relevant public may not be aware of the precise mathematical meaning of ‘nano’, it would none the less immediately associate that term with the small size of the goods in question, since the term had become a direct reference to that characteristic. Fourthly, the Board of Appeal held, in the light of those findings, that the trade mark applied for was descriptive of the characteristics of the goods listed in paragraph 3 above, within the meaning of Article 7(1)(c) of Regulation No 207/2009. Fifthly, the Board of Appeal noted that, in so far as the word ‘nano’ was neither vague nor unusual in relation to the goods listed in paragraph 3 above, the trade mark applied for was devoid of any distinctive character in regard thereto, under Article 7(1)(b) of Regulation No 207/2009.

– order OHIM to pay the costs, including the costs of proceedings before the Board of Appeal of OHIM.

9 The applicant puts forward five pleas in law in support of its action. The first plea in law alleges breach of its right to be heard. The second plea alleges infringement of the obligation to state reasons. The third plea in law alleges breach of Article 76 of Regulation No 207/2009, in so far as the Board of Appeal based its decision on speculation. The fourth plea in law alleges infringement of Article 7(1)(c) of Regulation No 207/2009. The fifth plea in law alleges infringement of Article 7(1)(b) of Regulation No 207/2009.

11 In the light of the manner in which the applicant’s arguments are structured, it is appropriate to consider the pleas in law in the order in which they were presented, with the exception of the third and fourth pleas in law which are closely related and must, consequently, be considered together.

The first plea in law, alleging infringement of the applicant’s right to be heard

12 The applicant submits that the contested decision is based on a factual premise in respect of which it was not given an opportunity to submit its observations. Although the examiner relied on the finding that ‘nano’ referred to the extremely small size of the product or the use of nanotechnology, the contested decision is based not on the notion of an ‘extremely small’ size, but only on that of a ‘small’ size, as illustrated by paragraph 21 of the decision. In those circumstances, the applicant believes that its right to be heard was infringed.

14 Pursuant to the second sentence of Article 75 of Regulation No 207/2009, decisions of OHIM are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. The general principle of protection of the right to defend oneself is enshrined in the law of trade marks by that provision. According to that general principle of EU law, a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his point of view known. The right to be heard extends to all the factual and legal material which forms the basis for the decision, but not to the final position which the authority intends to adopt (see judgment of 7 February 2007 in Kustom Musical Amplification v OHIM (shape of a guitar), T‑317/05, ECR, EU:T:2007:39, paragraphs 24, 26 and 27 and the case-law cited).

15 Article 37(3) of Regulation No 207/2009 states, in that context, that an application for a Community trade mark may not be refused before the applicant has been allowed the opportunity of withdrawing or amending the application or of submitting his observations.

16 In the present case, it should be noted, first, that, in his objections of 8 March 2012 to the registration of the trade mark applied for, the examiner noted the following:

‘The word NANO means “extremely small” … and “involving the use of nanotechnology: used with some nouns” …

The relevant consumer will not perceive it as unusual but rather as a meaningful concept: the use of very small devices, materials or other structures.

The expression NANO, taken as a whole, immediately informs consumers, without further reflexion, that the goods applied for are either small in dimension or are based on nanotechnology.

Accordingly, that expression contains obvious and direct information on the … characteristics of the goods at issue.’

17 That passage was reproduced in its entirety in the examiner’s decision of 22 June 2012.

18 Thus, contrary to the applicant’s claims, OHIM already expressly stated during the proceedings before the examiner that because the term ‘nano’ has the meaning of ‘extremely small’, the trade mark applied for was going to be perceived as referring to the small size of the goods at issue.

19 Next, it should be noted that that position was understood by the applicant, who responded to it in the written statement setting out the grounds of its appeal against the examiner’s decision. In point II.2.b of that statement, the applicant stated the following:

‘Even supposing that the interpretation of “nano” as “extremely small” is correct, the [e]xaminer based his reasoning on another interpretation. The examiner … found that the term “nano” informs consumers that the goods applied for are small … This is remarkable as there is … a considerable difference between “small” and “extremely small” as far as the claimed goods are concerned.’

20 Finally, it should be noted that, in paragraph 21 of the contested decision, the Board of Appeal set out, in response to the argument put forward by the applicant, the reasons for which, in its opinion, the term ‘nano’ would be perceived as a reference to the small size of the goods at issue, despite its meaning of ‘extremely small’.

21 In those circumstances, it must be concluded that OHIM did set out, from the stage of the proceedings before the examiner, its position that the trade mark applied for would be perceived as referring to the small size of the goods at issue. That position was understood by the applicant, who responded to it in its statement setting out the grounds of its appeal against the examiner’s decision. The Board of Appeal responded to the applicant’s comments in the contested decision.

22 Therefore, the applicant incorrectly alleges that the contested decision is based on a factual premise on which it has not been able to submit its observations.

23 Accordingly, the applicant also incorrectly alleges an infringement of its right to be heard, the consequence of which is that the first plea in law must be rejected.

The second plea in law, alleging infringement of the obligation to state reasons

24 The applicant submits that OHIM has infringed the obligation to state reasons in that the grounds of the contested decision are contradictory. The Board of Appeal’s findings regarding the meaning of the term ‘nano’ are alleged to be inconsistent, in that the Board states, at paragraph 17 of the contested decision, that the term means ‘extremely small’ and, at paragraph 21, that it means ‘small’.

25 According to the applicant, that contradiction shows that, in the Board of Appeal’s opinion, the trade mark applied for, in its meaning of ‘extremely small’, is not, contrary to the examiner’s conclusion, descriptive of the goods referred to in paragraph 3 above. Furthermore, that contradiction goes to the heart of the issue to which the contested decision relates, which means that that decision is unlawful.

27 Under Article 75 of Regulation No 207/2009, decisions of OHIM are required to state the reasons on which they are based. The scope of that duty to state reasons is the same as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. The purpose of that obligation is twofold: firstly, to enable the persons concerned to ascertain the reasons for the measure in order to defend their rights and, secondly, to enable the Courts of the European Union to exercise their power to review the legality of the decision (see, to that effect, judgment of 21 October 2004 in KWS Saat v OHIM, C‑447/02 P, ECR, EU:C:2004:649, paragraphs 63 to 65).

28 In the present case, it should be noted that, contrary to what the applicant claims, the findings that, first, the word ‘nano’ means ‘extremely small’ and, second, that the trade mark applied for will be perceived by the relevant public, in relation to the goods listed in paragraph 3 above, as referring to their small size, are not contradictory.

29 In paragraph 21 of the contested decision, the Board of Appeal expressly pointed out that, whilst the relevant public may not be aware of the precise mathematical meaning of ‘nano’, at least they would associate it with the small size of the product in question, that term having developed to become a direct reference to that characteristic.

30 Therefore, it is clear from the grounds of the contested decision that the Board of Appeal based its decision on the fact that, in the perception of the relevant public, the word ‘nano’ has acquired a meaning which diverges from its exact mathematical definition and, accordingly, from the reference to an ‘extremely small’ dimension and denotes, more generally, a ‘small’ size.

31 In those circumstances, the complaint that the Board of Appeal infringed the obligation to state reasons by adopting the contested decision must be dismissed.

32 That finding entails, moreover, that the applicant’s argument, reproduced in paragraph 25 above, that the Board of Appeal actually distanced itself from the examiner’s conclusion with respect to the descriptive character of the trade mark applied for in its meaning of ‘extremely small’, is based on an incorrect factual premise. That is particularly so because, as is clear from the examination of the first plea in paragraphs 14 to 23 above, OHIM’s position was based, from the stage of the proceedings before the examiner, on the view that the trade mark applied for was going to be perceived as referring to the small size of the goods at issue. Furthermore, in any event, the applicant’s argument is ineffective in that it does not result in the identification of a lack of or an inadequacy in the reasoning of the contested decision.

The third and fourth pleas in law, alleging an infringement of Article 76 and of Article 7(1)(c) of Regulation No 207/2009

34 The applicant notes that, when examining whether a sign may be registered as a Community trade mark, OHIM is required to examine the facts of its own motion and must conduct its assessment on the basis of specific facts, and not on the basis of conjecture or mere doubts.

35 According to the applicant, the Board of Appeal relied in the contested decision on mere conjecture to the effect that the word ‘nano’ is associated with the ‘idea of a small unit’ and ultimately refers directly to a ‘type of product which is small in size’. Moreover, the contested decision disregards clear and unambiguous indications calling into question the Board of Appeal’s position, which are set out in the evidence gathered by the examiner.

36 The applicant submits that the consequence of the infringements of the obligation to examine the facts of its own motion is that the Board of Appeal incorrectly held, in the contested decision, that the trade mark applied for was descriptive of the goods listed in paragraph 3 above, even though it did not present a sufficiently direct link with those goods.

38 Article 7(1)(c) of Regulation No 207/2009 provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered. Those descriptive signs are deemed incapable of fulfilling the essential function of trade marks, which is to indicate origin (judgment of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraphs 29 and 30).

39 Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, namely that signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of 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, to that effect, judgment of 12 January 2006 in Deutsche SiSi-Werke v OHIM, C‑173/04 P, ECR, EU:C:2006:20, paragraph 62 and the case-law cited).

40 The signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (judgments of 20 September 2001 in Procter & Gamble v OHIM, C‑383/99 P, ECR, EU:C:2001:461, paragraph 39, and of 22 June 2005 in Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, ECR, EU:T:2005:247, paragraph 24).

41 It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific link between the sign and those goods or services to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (judgment in PAPERLAB, paragraph 40 above, EU:T:2005:247, paragraph 25).

42 Consequently, the descriptive character of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is applied for and, second, in relation to the perception of it by the relevant public, which is composed of the consumers of those goods or services (judgment of 14 June 2007 in Europig v OHIM (EUROPIG), T‑207/06, ECR, EU:T:2007:179, paragraph 30).

43 Furthermore, it is apparent from Article 76(1) of Regulation No 207/2009 that, when assessing the registrability of a sign as a Community trade mark, OHIM is to examine the facts of its own motion. In order to prevent trade marks from being improperly registered and, for reasons of legal certainty and good administration, to ensure that trade marks whose use could be successfully challenged before the courts are not registered, that assessment must be based on the facts. In particular, OHIM may not rely, without relevant justification, on conjecture or mere doubts (see, to that effect, judgment of 9 September 2010 in OHIM v Borco-Marken-Import Matthiesen, C‑265/09 P, ECR, EU:C:2010:508, paragraphs 44 to 46).

44 In the present case, it should be noted, as a preliminary point, that the applicant does not dispute the definition of the relevant public accepted by the Board of Appeal. In as much as that definition is not, in fact, flawed, it is appropriate to rely on it in assessing the perception by that public of the trade mark applied for.

45 In that context, first of all, contrary to what the Board of Appeal has held, the applicant disputes that the word ‘nano’ means, as such, ‘extremely small’ and ‘involving the use of nanotechnology’. It contends that those meanings are not supported by the evidence relied on by the adjudicating bodies of OHIM.

46 The applicant thus submits that the extracts from the dictionaries relied on by the examiner and by the Board of Appeal do not refer to the word ‘nano’ as such, but to the prefix ‘nano-’ used in compound words. It states that there is no evidence showing that the meaning of the prefix ‘nano-’, as a reference to the extremely small size of the goods or to the use of nanotechnology, may be applied to the term ‘nano’ when used alone.

47 In that regard, the Board of Appeal noted, in paragraph 17 of the contested decision, that the fact that the word ‘nano’ is used as a prefix does not mean that the relevant public will not be able to ascribe any meaning to it when it is used alone. In as much as that finding is based on facts arising from practical experience generally acquired of the marketing of goods, the applicant incorrectly submits that the Board of Appeal failed to submit any evidence to support it (see, to that effect, judgment of 3 July 2013 in Airbus v OHIM (NEO), T‑236/12, ECR, EU:T:2013:343, paragraph 37 and the case-law cited).

48 Moreover, the applicant has not adduced any evidence to show that, in the present case, the relevant public would not understand the word ‘nano’, when used alone, as having the same meaning as the prefix ‘nano -’, and, accordingly, as referring either to the size of the goods or to the use of nanotechnology, in accordance with the Board of Appeal’s finding.

49 Next, the applicant notes that the research carried out on-line by the examiner in order to determine the use of the term ‘nano’ in the context of robotics contains only examples taken from the medical and pharmaceutical fields. However, the goods listed in paragraph 3 above fall within the fields of games, education and learning, which are very different. Consequently, the research in question is not likely to support the finding that the trade mark applied for is descriptive of the goods listed in paragraph 3 above.

50 In that regard, on the one hand, it should be noted that the applicant is mistaken as to the relevance of the research carried out by the examiner. The Board of Appeal did not expressly refer to that research in the grounds of the contested decision and neither did it rely on the actual use of the term ‘nano’ in the context of robotics. Furthermore, the examiner referred to the results of his research in page 3 of his decision not in order to support the finding of descriptiveness of the trade mark applied for, but in order to establish that it was devoid of distinctive character. Thus, the research carried out by the examiner is a priori irrelevant in the context of the present action which relates to the lawfulness of the Board of Appeal’s decision, and not of that of the examiner, and, a fortiori, in the context of the fourth plea, which does not relate to the lack of distinctiveness of the trade mark applied for but rather to its descriptiveness.

51 On the other hand, in any event, the examples mentioned by the examiner support a finding that the word ‘nano’ is used in the medical, pharmaceutical and biotechnological field in order to identify robots or other devices which are designed or manufactured using nanotechnology. In so far as the use of nanotechnology in the design or manufacture of goods is not an exclusive characteristic of the above fields, the research conducted by the examiner, assuming it is relevant, constitutes an indication suggesting that the word ‘nano’ is likely to be used to describe the same characteristics in robots and related goods which are intended for use in other fields, such as the fields of games, education and learning, which are at issue in the present case.

52 Finally, the applicant submits that nothing in Council Directive 80/181/EEC of 20 December 1979 on the approximation of the laws of the Member States relating to units of measurement and on the repeal of Directive 71/354/EEC (OJ 1980 L 39, p. 40), referred to in paragraph 15 of the contested decision, permits the conclusion that the trade mark applied for is descriptive.

53 In that regard, it is sufficient to observe that Directive 80/181 was referred to in the contested decision not in order to show the descriptive character of the trade mark applied for, but to illustrate the finding that the word ‘nano’ was known in several official languages of the Union. Consequently, the applicant’s argument must be rejected as ineffective.

54 In the light of paragraphs 46 to 53 above, it must be held that the applicant’s arguments do not prove that the Board of Appeal erred in law in holding that, when used in relation to the goods listed in paragraph 3 above, the word ‘nano’ means ‘extremely small’ or ‘involving the use of nanotechnology’.

55 Secondly, according to the applicant, assuming that the trade mark applied for refers to the ‘extremely small’ size of the goods listed in paragraph 3 above, that reference does not constitute a descriptive indication within the meaning of Article 7(1)(c) of Regulation No 207/2009. In the light of the purpose for which they are intended, the goods in question are designed to be manipulated by hand and observed with the naked eye. An ‘extremely small’ size would make such handling and such observation very difficult, even dangerous.

56 However, as was noted in the context of the review of the second plea, set out above, it is clear from paragraph 21 of the contested decision that the Board of Appeal relied on the finding that, in so far as the word ‘nano’ is understood by the relevant public as referring to the size of the goods, it has acquired a meaning which diverges from its mathematically exact definition and, accordingly, from the reference to an ‘extremely small’ size and denotes, more generally, a ‘small’ size.

57 In so far as the applicant argues that that finding is not supported by evidence, it should be noted that the Board of Appeal based those findings, as it was entitled to do, on facts arising from practical experience generally acquired of the marketing of goods (see judgment in NEO, paragraph 47 above, EU:T:2013:343, paragraph 37 and the case-law cited).

58 In those circumstances, it must be held that the Board of Appeal’s finding that the relevant public will perceive the trade mark applied for as referring to the small size of the goods listed in paragraph 3 above is not flawed.

59 Interpreted in that way, the trade mark applied for may designate a characteristic of the goods listed in paragraph 3 above, which entails that it is descriptive of those goods, within the meaning of Article 7(1)(c) of Regulation No 207/2009, as held by the Board of Appeal in the contested decision.

60 Thirdly, the applicant’s arguments do not specifically result in the calling into question of the merits of the Board of Appeal’s finding, set out in paragraph 18 of the contested decision, that the trade mark applied for may be perceived by the relevant public as referring to the fact that the goods listed in paragraph 3 above are based on nanotechnology.

61 That finding is not flawed, since nanotechnology can be used in various fields of electronics, computing and engineering, which are relevant to the design and manufacture of the goods listed in paragraph 3 above, as OHIM contends in its pleadings before the Court.

62 Consequently, it must be held that, in that respect too, the trade mark applied for is descriptive of the goods listed in paragraph 3 above, within the meaning of Article 7(1)(c) of Regulation No 207/2009.

63 In view of all the foregoing, the Board of Appeal correctly, and without breaching the obligation to examine the facts of its own motion, concluded in the contested decision that the trade mark applied for was descriptive, within the meaning of Article 7(1)(c) of Regulation No 207/2009, of the goods listed in paragraph 3 above.

65 In addition, it is apparent from Article 7(1) of Regulation No 207/2009 that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as a Community trade mark (see, to that effect, judgments of 19 September 2002 in DKV v OHIM, C‑104/00 P, ECR, EU:C:2002:506, paragraph 29, and of 14 September 2004 in Applied Molecular Evolution v OHIM (APPLIED MOLECULAR EVOLUTION), T‑183/03, ECR, EU:T:2004:263, paragraph 29). In those circumstances, in the light of the finding in paragraph 63 above, the action must be dismissed in its entirety without there being any need to consider the fifth plea, alleging infringement of Article 7(1)(b) of that regulation.

66 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Innovation First v OHIM (NANO) (Judgment) [2015] EUECJ T-379/13 (10 February 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T37913.html Cite as: EU:T:2015:84, ECLI:EU:T:2015:84, [2015] EUECJ T-379/13

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