Information Resources v OHIM (Growth Delivered) (Judgment) [2015] EUECJ T-528/14 (02 December 2015)

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(Community trade mark — Application for Community word mark Growth Delivered — Mark consisting of an advertising slogan — Absolute ground for refusal — Lack of distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009)

Information Resources, Inc., established in Chicago, Illinois (United States), represented by C. Schulte, lawyer,

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

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 5 May 2014 (Case R 1777/2013-4), concerning an application for registration of the word sign Growth Delivered as a Community trade mark,

composed of H. Kanninen, President, I. Pelikánová and E. Buttigieg (Rapporteur), 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, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991, applicable in the present case by virtue of Article 227(7) of the Rules of Procedure of the General Court,

1 On 11 April 2013, the applicant, Information Resources, Inc., filed an application for registration of a Community trade mark with 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). The mark for which registration was sought is the word sign Growth Delivered.

2 The services in respect of which registration is sought are 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 correspond to the following descriptions:

– Class 35: ‘Advertising; business management, business administration, office functions; business and management consultancy services; cost price analyses, trade promotion and price comparison services; commercial information agencies, business inquiries, business investigations, marketing studies, business information, business research, market analysis and research, market surveys; opinion polling; marketing management advice, provision of marketing and sales advisory services for manufacturers and retailers; market assessment services; product innovation services, product launch services; brand management; marketing mix analysis and consultancy, shopper marketing; marketing and advisory services derived from consumer purchase and behaviour; marketing studies, namely environment testing (online or offline) services retail channel analysis’;

– Class 41: ‘Education, providing of training; publication of texts, other than publicity texts; writing of texts, other than publicity texts; arranging and conducting of workshops (training), educational instruction; training services relating to business management and management consultancy; education services relating to commerce’;

– Class 42: ‘Scientific and technological services and research and design relating thereto, particularly with respect to proprietary data assets and models; industrial analysis and research services; research and development for others; scientific advisory services; attitudinal research; design of models, particularly mathematical models; computerised analysis of data; design, development and implementation of software; design of computer machine and computer software for commercial analysis and reporting; design of models’.

3 The examiner refused the application by decision of 5 July 2013 on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009. The examiner stated that the mark applied for, Growth Delivered, the structure of which did not diverge from English grammar rules, would be perceived as meaning that the services’ growth had been delivered. In relation to Article 7(1)(c) of Regulation No 207/2009, the examiner considered that that expression immediately informed the consumers that the services applied for ‘creat[ed]/improv[ed]/facilitat[ed]’ the increase in ‘size/significance’ of the services and therefore contained obvious and direct information on the kind, quality and intended purpose of the services in question. Thus, due to the sufficiently close link between that expression and those services, the mark applied for fell within the scope of the prohibition laid down by that provision. In relation to Article 7(1)(b) of Regulation No 207/2009, the examiner stated that the relevant public would perceive the expression ‘growth delivered’ as a promotional message with regard to all the services concerned, the purpose being to highlight the positive aspects of the services concerned, in that they would deliver growth in the desired field. The examiner concluded that the mark applied for could not therefore indicate a commercial origin and could not be registered.

4 On 10 September 2013, the applicant appealed against the examiner’s decision of 5 July 2013.

5 By decision of 5 May 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal, holding that the trade mark applied for was devoid of any distinctive character.

6 In particular, the Board of Appeal stated that the services covered were directed not only at a professional part of the public but also at the general public in the European Union, whose level of attention was average to high and that, in any event, the awareness of the professional part of the public was likely to be relatively low when it comes to promotional indications (paragraph 18 of the contested decision). It also held that as the sign is composed of English terms, its distinctiveness must be assessed, first of all, with respect to the English-speaking part of the public (paragraph 19 of the contested decision).

7 In addition, the Board of Appeal considered that the terms ‘growth’ and ‘delivered’ had been correctly defined by the examiner and that, in accordance with his assessment, the mark applied for was a promotional reference to a positive aspect of the services covered, namely that they would deliver growth. The mark applied for would therefore only be seen as a promotional message and not as an indication of the commercial origin of the services covered (paragraph 19 of the contested decision). The Board of Appeal added that there is nothing in the mark that might help the relevant public to memorise the message conveyed easily and perceive it as intended to distinguish the commercial origin of the services covered, since that message is clearly expressed, in everyday language and without any hint of fantasy or resonance (paragraphs 20 and 21 of the contested decision).

8 Finally, the Board of Appeal rejected the applicant’s argument based on the registration of similar marks including the terms ‘delivered’ or ‘growth’, pointing out that the examination of each application for registration had to be stringent and full in the light of the specific criteria and the factual circumstances of the individual case (paragraph 22 of the contested decision).

11 In support of its action, the applicant relies on two pleas in law, alleging (i) infringement of Article 7(1)(b) of Regulation No 207/2009 and (ii) infringement of Article 7(1)(c) of that regulation.

First plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009

12 In support of the first plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, the applicant puts forward, in essence, three complaints. First, it argues that the Board of Appeal erred in its assessment as regards the relevant public and its level of attention. Next, it claims that the Board of Appeal did not correctly assess the distinctive character of the mark applied for. Finally, it argues that the Board of Appeal took insufficient account of prior registrations that include the terms ‘growth’ or ‘delivered’.

13 According to Article 7(1)(b) of Regulation No 207/2009, ‘trade marks which are devoid of any distinctive character’ are not to be registered. Article 7(2) of Regulation No 207/2009 states in addition that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.

14 For a trade mark to possess distinctive character, within the meaning of Article 7(1)(b) of Regulation No 207/2009, it must serve to identify the goods for which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from the goods of other undertakings (see judgments of 21 January 2010 in Audi v OHIM, C‑398/08 P, ECR, EU:C:2010:29, paragraph 33 and the case-law cited, and 20 October 2011 Freixenet v OHIM, C‑344/10 P and C‑345/10 P, ECR, EU:C:2011:680, paragraph 42 and the case-law cited).

15 In that regard, it must be recalled that the signs devoid of any distinctive character to which Article 7(1)(b) of Regulation No 207/2009 refers are signs which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, thus enabling the consumer who acquired the goods or services designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (judgment of 27 February 2002 in REWE-Zentral v OHIM (LITE), T‑79/00, EU:T:2002:42, paragraph 26). That is true, in particular, for signs which are commonly used in connection with the marketing of the goods or services concerned (judgments of 3 July 2003 in Best Buy Concepts v OHIM (BEST BUY), T‑122/01, ECR, EU:T:2003:183, paragraph 20, and 30 June 2004 Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, ECR, EU:T:2004:198, paragraph 24).

16 The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public (see judgment in Freixenet v OHIM, cited in paragraph 14 above, EU:C:2011:680, paragraph 43 and the case-law cited).

17 As regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded as such by virtue of such use (judgments of 21 October 2004 in OHIM v Erpo Möbelwerk, C‑64/02 P, ECR, EU:C:2004:645, paragraph 41, and Audi v OHIM, cited in paragraph 14 above, EU:C:2010:29, paragraph 35).

18 As regards the assessment of the distinctive character of such marks, the Court of Justice has already held that it is inappropriate to apply to them criteria which are stricter than those applicable to other types of sign (judgments in OHIM v Erpo Möbelwerk, cited in paragraph 17 above, EU:C:2004:645, paragraphs 32 and 44, and Audi v OHIM, cited in paragraph 14 above, EU:C:2010:29, paragraph 36).

19 The Court of Justice has accordingly held that an advertising slogan cannot be required to display imaginativeness or even conceptual tension which would create surprise and so make a striking impression in order to have the minimal level of distinctiveness required under Article 7(1)(b) of Regulation No 207/2009 (see, to that effect, judgments in OHIM v Erpo Möbelwerk, cited in paragraph 17 above, EU:C:2004:645, paragraphs 31 and 32, and Audi v OHIM, cited in paragraph 14 above, EU:C:2010:29, paragraph 39).

20 Furthermore, the mere fact that a mark is perceived by the relevant public as a promotional formula and that, because of its laudatory nature, it could in principle be used by other undertakings, is not sufficient in itself to support the conclusion that that mark is devoid of distinctive character (judgments in Audi v OHIM, cited in paragraph 14 above, EU:C:2010:29, paragraph 44, and of 12 July 2012 in Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 29).

21 The laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood — even primarily understood — as a promotional formula has no bearing on its distinctive character (judgments in Audi v OHIM, cited in paragraph 14 above, EU:C:2010:29, paragraph 45, and Smart Technologies v OHIM, cited in paragraph 20 above, EU:C:2012:460, paragraph 30).

22 It follows that a trade mark consisting of an advertising slogan must be regarded as being devoid of distinctive character if it is liable to be perceived by the relevant public only as a simple promotional formula. By contrast, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (order of 12 June 2014 in Delphi Technologies v OHIM, C‑448/13 P, EU:C:2014:1746, paragraph 37; judgments of 11 December 2012 in Fomanu v OHIM (Qualität hat Zukunft), T‑22/12, EU:T:2012:663, paragraph 22, and 6 June 2013 Interroll v OHIM (Inspired by efficiency), T‑126/12, EU:T:2013:303, paragraph 24).

23 It is in the light of those considerations that it must be examined whether, as the applicant submits in its first plea, the Board of Appeal infringed Article 7(1)(b) of Regulation No 207/2009 in finding that the mark applied for was devoid of any distinctive character.

On the error of assessment as regards the relevant public and its level of attention

24 In the present case, as regards the relevant public, the Board of Appeal concluded, like the examiner, that the services covered were directed at the general public and professionals. As regards a sign composed of English terms, it added that the English-speaking public had to be taken into consideration. Finally, it considered that the level of attention of the relevant public was average to high and that, for the professional public, it could be weak as regards purely promotional indications, which well-informed consumers did not see as decisive.

25 In that regard, first, the applicant challenges the definition of the relevant public as regards the services covered and claims that those services are directed mostly at professionals whose degree of attention is high. Second, it argues that the Sykes Enterprises case (judgment of 5 December 2002 in Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS), T‑130/01, EU:T:2002:301) on which the Board of Appeal relied could not be applied in the present case given that, in that earlier case, the slogan in question had been described as a ‘slogan commonly used in the sector concerned’, which is not the case of the mark applied for.

27 First, the Court finds, like the Board of Appeal, that the services designated by the mark applied for are aimed (i) at a public of professionals as regards all the services covered that are in Classes 35 and 42 and also as regards the publication of texts, other than publicity texts, and the writing of texts, other than publicity texts, in Class 41 and (ii) at a public of professionals and the general public as regards all services covered that are within Class 41 with the exception of the publication of texts, other than publicity texts, and the writing of texts, other than publicity texts.

28 Second, it must be pointed out that, for the purposes of Article 7(2) of Regulation No 207/2009, since the mark applied for is composed of two English words, ‘growth’ and ‘delivered’, the relevant public in relation to which it is necessary to assess the absolute ground for refusal is made up of the English-speaking public.

29 Third, it should be recalled that according to the General Court’s settled case-law, despite a generally high level of attention in the case of a public made up of professionals, that level may be relatively low in relation to promotional indications, which well-informed consumers do not see as decisive (see, to that effect, judgments in REAL PEOPLE, REAL SOLUTIONS, cited in paragraph 25 above, EU:T:2002:301, paragraph 24; BEST BUY, cited in paragraph 15 above, EU:T:2003:183, paragraph 25; and of 23 September 2011 in Vion v OHIM (PASSION FOR BETTER FOOD), T‑251/08, EU:T:2011:526, paragraph 20; and 17 January 2013 Solar-Fabrik v OHIM (Premium XL and Premium L), T‑582/11 and T‑583/11, EU:T:2013:24, paragraph 28).

30 It follows from the foregoing that the Board of Appeal was correct in finding that, in the present case, the relevant public was composed of consumers and English-speaking professionals whose degree of attention was average to high, but could be low for the public of professionals in the case of a promotional message.

31 That conclusion cannot be called into question by the applicant’s argument relating to the judgment in REAL PEOPLE, REAL SOLUTIONS, cited in paragraph 25 above (EU:T:2002:301).

32 It should be noted that, while it is true that in the judgment in REAL PEOPLE, REAL SOLUTIONS, cited in paragraph 25 above (EU:T:2002 301, paragraphs 22 and 23), it was made apparent that the slogan in question was commonly used, it does not follow either from that judgment or the subsequent case-law that the factual circumstance specific to the judgment in REAL PEOPLE, REAL SOLUTIONS, cited in paragraph 25 above (EU:T:2002:301) has been made into a condition for application of the principle set out in paragraph 29 above.

33 It is therefore necessary to reject as unfounded the argument alleging an error of assessment regarding the relevant public and its level of attention.

On the error of assessment as regards the distinctive character of the mark applied for

34 The applicant submits, in essence, that the mark applied for has the minimal level of distinctiveness required to be registered as a Community trade mark. In particular, it criticises the Board of Appeal for having qualified the mark applied for as a slogan, as is clear from the arguments made in the context of the second plea, and for having considered that that mark had no distinctive character. It claims, in addition, that the mark applied for is not merely an ordinary advertising message, but possesses a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public. Finally, it argues that the Board of Appeal relied on obsolete case-law instead of taking as its basis the judgment in Audi, cited in paragraph 14 above (EU:C:2010:29), in the light of which the trade mark can be registered.

36 It is necessary, in respect of the present complaint, to determine whether the Board of Appeal correctly analysed the meaning of the mark applied for in concluding that it lacked distinctive character as regards the services at issue and the perception which the relevant public has of the mark.

37 First, with regard to the meaning of the mark applied for, the Court notes that it is established case-law that in the case of compound word signs, in order to assess whether or not a mark is devoid of any distinctive character, the overall impression given by it should be taken into consideration. That does not mean, however, that an examination may not first be made of each of the individual features which make up that mark. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (see judgment of 7 September 2011 in Meredith v OHIM (BETTER HOMES AND GARDENS), T‑524/09, EU:T:2011:434, paragraph 17 and the case-law cited).

38 In the present case, the mark applied for is made up of two English terms, ‘growth’ and ‘delivered’, each of which has its own meaning and the combination of which constitutes a slogan.

39 Contrary to what is maintained by the applicant, the combination of those terms, meaning respectively ‘process of growth’ and ‘delivered’ or ‘provided’ is not meaningless in relation to the services at issue, but sends a clear and unequivocal message, which is immediately apparent and does not require any interpretative effort on the part of the relevant English-speaking public.

40 That expression means that ‘growth is provided’, in the sense that use of the services offered by the applicant represents a source of growth for the recipients and users of those services. If, as argued by the applicant, the growth, as an intangible element, cannot be literally delivered, it is clear from the expression constituting the mark applied for that it is the use of the services covered by that mark which generates growth and not the growth that would, as such, be delivered or provided. It is clear that the services in Classes 35 and 42 and the services in Class 41 of the publication of texts, other than publicity texts, and the writing of texts, other than publicity texts, are offered to undertakings so that they may have information and analysis on the market in which they operate in order then to be able to adapt fully to the demands of that market and optimise their presence and strategy on that market. In addition, the services concerned within Class 41, excluding the services of the publication of texts, other than publicity texts, and the writing of texts, other than publicity texts, are offered to the general public and professionals to bring about for recipients of those services personal professional growth. Accordingly, when the English-speaking consumer, who easily perceives the meaning of the terms making up the mark applied for, encounters the services covered, which are all related to actions that can be implemented in order to increase growth, he will immediately understand that it is a matter of indicating the effects of those services. It follows that the applicant is wrong in its assertion that the expression ‘growth delivered’ is meaningless for the relevant public as regards the services at issue.

41 Furthermore, that expression conveys a laudatory message in that it highlights the qualities and usefulness of the services concerned and suggests to the relevant public that services bearing that trade mark have those qualities and are useful in terms of growth. Thus, the combination of the different word elements is laudatory and its function is to highlight the qualities and positive effects of the services covered (see, to that effect, judgment in Mehr für Ihr Geld, cited in paragraph 15 above, EU:T:2004:198, paragraph 29 and the case-law cited). Accordingly, the mark applied for will be immediately perceived by the relevant public as a promotional formula which indicates that use of the services in question will bring about growth.

42 The mark applied for is therefore immediately and necessarily understood by the relevant public as informing it of the quality of the services and their usefulness as to the desired growth process.

43 The Board of Appeal’s findings in paragraphs 19 to 21 of the contested decision, relating to the perception by the relevant public of the mark applied for, must therefore be upheld.

44 Second, as regards the elements likely to confer distinctive character on the mark applied for notwithstanding its promotional nature, the Court must, first, reject the applicant’s argument that the structure of the sign applied for is different from ordinary syntactical use in English in that the noun precedes the adjective, thus conferring a minimum of distinctive character on the mark applied for. In that regard, it must held that, contrary to what is maintained by the applicant, that fact is not such as to confer on the sign at issue an unusual or ambiguous character, in the light of the rules of English syntax, grammar, phonetics or semantics, which is capable of leading the relevant public to make an association of a different kind. While it is true that, in English, the adjective usually precedes the noun, the terms ‘mission accomplished’ or ‘progress made’, cited by OHIM, which are, furthermore, in current use in English, also attest to the habitual nature of such a syntactic turn of phrase in which the adjective follows the noun.

45 Furthermore, as to the applicant’s argument that the meaning of the mark applied for is not immediately apparent to the relevant public, but would require a cognitive process, it should be pointed out that the relevant public will perceive clearly and directly the promotional meaning of the sign at issue. Since the relevant public is not very attentive if a sign does not immediately indicate to it the origin or intended use of the services, but just gives it purely promotional information, it does not take the time either to enquire into the various possible functions of the sign at issue or mentally to register it as a trade mark. Therefore, the relevant public, faced with the services concerned, will immediately perceive the word sign Growth Delivered, without further specific analytical or interpretative reflection, as a laudatory or promotional reference to the high quality and usefulness of the services concerned and not as an indication of their commercial origin (see, to that effect, Mehr für Ihr Geld, cited in point 15 above, EU:T:2004:198, paragraph 29 and the case-law cited).

46 Finally, to the extent that the applicant claims that the mark applied for may have several meanings, it must be recalled, as OHIM observes, that a word sign must be refused registration under Article 7(1)(b) of Regulation No 207/2009 if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 23 January 2014 in Novartis v OHIM (CARE TO CARE), T‑68/13, EU:T:2014:29, paragraph 41).

47 It follows from the foregoing that the Board of Appeal was correct in concluding that the mark applied for had no distinctive character. That conclusion cannot be called into question by the applicant’s other arguments.

48 First, the applicant claims that the Board of Appeal relied on obsolete case-law in order to conclude that the mark applied for had no distinctive character whereas application of the judgment in Audi, cited in paragraph 14 above (EU:C:2010:29), would lead to a different conclusion and allow the sign to be registered. The applicant thus claims that, according to that judgment, the distinctive character of signs which form slogans must not be subject to a stricter control than that applied to signs which do not present that characteristic and that, in addition, inasmuch as the relevant public perceives the sign as an indication of origin, the fact that it is at the same time, or primarily, a promotional formula has no bearing on its distinctive character.

49 The Board of Appeal found, in paragraph 20 of the contested decision, that there was nothing in the mark applied for, beyond the promotional meaning for the services concerned, which would cause it to be memorised as a distinctive mark for those services. It added, in paragraph 21 of that decision, that the message conveyed by the mark was so clearly expressed, in everyday language, without any hint of fantasy or resonance, that the relevant public would not perceive and remember it as being intended to distinguish the commercial origin of the services concerned.

50 While it is clear from the contested decision that the Board of Appeal did not explicitly refer to the judgment in Audi, cited in paragraph 14 above (EU:C:2010:29), nevertheless that fact alone cannot in itself constitute an error of assessment of the criteria established by the Court in that case.

51 It follows from the contested decision that the Board of Appeal carried out an analysis of the ability of the sign in question to indicate to the consumer the commercial origin of the services covered, without merely finding that that sign was a promotional and laudatory message and without excluding the possibility that signs can, in principle, be understood both as promotional messages and as indications of commercial origin. Nor does it follow from the contested decision that the Board of Appeal disregarded the judgment in Audi, cited in paragraph 14 above (EU:C:2010:29), by applying to the sign applied for, characterised as a slogan, stricter assessment criteria than applied to signs which do not have that characteristic. Thus, registration of the mark applied for was not refused on the sole ground that it would be perceived as promotional and laudatory by the relevant public. On the contrary, the Board of Appeal rejected the application for registration on the ground that, beyond its promotional meaning, the mark applied for did not contain any element enabling the relevant public to perceive it as an indication of the commercial origin of the services at issue (see, to that effect, judgment of 6 June 2013 in Delphi Technologies v OHIM (INNOVATION FOR THE REAL WORLD), T‑515/11, EU:T:2013:300, paragraphs 37 and 38).

52 Finally, the Court must also reject the applicant’s argument that the Court should annul the Board of Appeal’s decision in the light of the judgment in Audi, cited in paragraph 14 above (EU:C:2010:29). It follows from paragraph 47 of that judgment that the Court of Justice considered that the mark applied for in that case, VORSPRUNG DURCH TECHNIK, which means ‘advance or advantage through technology’, had distinctive character for the relevant public since that mark could have a number of meanings, or constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered. However, it is clear that, in the present case, the mark applied for, as has been shown in paragraphs 44 to 46 above, does not enable the commercial origin of the services covered to be identified and does not have any distinctive character (see, to that effect, judgment in INNOVATION FOR THE REAL WORLD, cited in paragraph 51 above, EU:T:2013:300, paragraph 54 and the case-law cited).

53 Second, the applicant relies on the case-law according to which a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 (see, to that effect, judgments of 27 February 2002 in Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, ECR, EU:T:2002:41, paragraph 39, and 6 March 2003 DaimlerChrysler v OHIM (Calandre), T‑128/01, ECR, EU:T:2003:62, paragraph 33). In that regard, it must nevertheless be stated that the sign at issue has no distinctive character, such that that argument must be rejected as unfounded.

54 It follows that the Board of Appeal did not commit an error of assessment as to the distinctive character of the mark.

55 The applicant submits that the Board of Appeal did not take sufficient account of earlier registrations containing the terms ‘growth’ or ‘delivered’ and that, consequently, it infringed the principle of equal treatment.

57 In the light of the principles of equal treatment and sound administration, it has indeed been held that OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 74).

58 Nevertheless, it has also been held that the application of those principles must be consistent with respect for legality and that a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else (judgment in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 57 above, EU:C:2011:139, paragraphs 75 and 76).

59 Moreover, it is settled case-law that, for reasons of legal certainty and of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 57 above, EU:C:2011:139, paragraph 77).

60 In the present case, the Board of Appeal carried out a comprehensive and concrete examination of the mark applied for before refusing it registration and the assessment undertaken in respect of the first and second complaints of this plea shows that the Board of Appeal did not make any error when it decided that the absolute ground for refusal referred to in Article 7(1)(b) of Regulation No 207/2009 precluded registration of the sign.

61 Thus, since the examination of the trade mark at issue could not, in itself, lead to a different conclusion, the applicant’s claims of a failure to take into consideration the registration of identical marks containing the terms ‘growth’ or ‘delivered’ cannot succeed. Accordingly, the applicant cannot usefully rely on a previous decision of OHIM in order to cast doubt on the conclusion that the registration of the trade mark applied for is incompatible with Regulation No 207/2009 (see, to that effect, judgment of 25 March 2014 in Deutsche Bank v OHIM (Passion to Perform), T‑291/12, EU:T:2014:155, paragraph 68).

62 The Court must therefore reject the third complaint and, accordingly, the first plea.

Second plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009

63 By the second plea, the applicant argues that even though the Board of Appeal did not rule on the descriptiveness of the mark applied for, the latter is not caught by the absolute ground set out in Article 7(1)(c) of Regulation No 207/2009.

64 In that regard, it is sufficient to recall that, according to settled case-law, it is apparent from the wording of 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 applied for not to be registrable as a Community trade mark (judgments of 19 September 2002 in DKV v OHIM, C‑104/00 P, ECR, EU:C:2002:506, paragraph 29, and 6 November 2007 RheinfelsQuellen H. Hövelmann v OHIM (VOM URSPRUNG HER VOLLKOMMEN), T‑28/06, ECR, EU:T:2007:330, paragraph 43).

65 In the present case, since the existence of the absolute ground for refusal under Article 7(1)(b) of Regulation No 207/2009 has been established, correctly, by the Board of Appeal, there is no need to examine the plea relating to Article 7(1)(c) of that regulation.

66 In the light of all the foregoing, the action must be dismissed in its entirety.

67 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.

68 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with 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) >> Information Resources v OHIM (Growth Delivered) (Judgment) [2015] EUECJ T-528/14 (02 December 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T52814.html Cite as: EU:T:2015:920, [2015] EUECJ T-528/14, ECLI:EU:T:2015:920

Court of Justice of the European Communities (including Court of First Instance Decisions)