Geemarc Telecom v OHMI - Audioline (AMPLIDECT) (Intellectual property) [2011] EUECJ T-59/10 (23 November 2011)

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(Community trade mark – Invalidity proceedings – Community word mark AMPLIDECT – Absolute grounds for refusal – Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 – Descriptive character – No distinctive character – Acquisition of distinctive character through use – Evidence)

Geemarc Telecom International Ltd, established in Wanchai (Hong Kong), represented by G. Farrington, Solicitor,

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

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Audioline GmbH, established in Neuss (Germany), represented by U. Blumenröder, P. Lübbe and B. Allekotte, lawyers,

1 On 9 January 2004, the applicant, Geemarc Telecom International Ltd, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by 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 16 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, as revised, and correspond, for each of those classes, to the following description:

4 The mark AMPLIDECT was registered as a Community trade mark on 25 May 2005 for those goods under the number 3603883.

5 On 30 July 2008, the intervener, Audioline GmbH, filed an application for a declaration of invalidity against that mark pursuant to Article 7(1)(b) and (c) of Regulation No 40/94 (now Article 7(1)(b) and (c) of Regulation No 207/2009) in respect of the goods in Class 9. The application for a declaration of invalidity was based on the descriptive character of the disputed mark and on its lack of distinctive character.

6 By decision of 10 June 2009, the Cancellation Division of OHIM dismissed the application for a declaration of invalidity and ordered the intervener to pay the costs of the proceedings.

7 On 6 August 2009, the intervener filed a notice of appeal at OHIM, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the Cancellation Division’s decision.

8 By decision of 20 November 2009 (‘the contested decision’), the Second Board of Appeal of OHIM upheld that appeal and, consequently, declared the disputed mark to be invalid in respect of all the goods in Class 9. Concentrating in its analysis mainly on French-speaking consumers, the Board of Appeal based that decision, in essence, on the following grounds:

11 The applicant puts forward three pleas in law in support of its action. The first plea alleges that the Board of Appeal erred in law by not restricting its examination to the evidence and arguments put forward by the parties before the Cancellation Division. The second plea alleges infringement of Article 7(1)(b) and (c) of Regulation No 207/2009 in so far as the Board of Appeal unlawfully granted the application for a declaration that the Community trade mark AMPLIDECT is invalid by finding that it is descriptive and therefore lacks distinctive character. Lastly, by its third plea, alleging infringement of Article 7(3) of Regulation No 207/2009, the applicant criticises the Board of Appeal on the ground that it failed to take account of the fact that the Community trade mark AMPLIDECT had acquired an enhanced distinctiveness through the use which had been made of it.

The first plea, alleging that the Board of Appeal erred in law by not restricting its examination to the evidence and arguments put forward by the parties before the Cancellation Division

12 In its first plea, the applicant complains that the Board of Appeal took account, during its examination of the application for a declaration of invalidity, of documents which were submitted by the intervener for the first time at the stage of the appeal, although they could have been submitted before the Cancellation Division. One of the main documents at issue is a semantic study of the term ‘ampli’ carried out in September 2009 by the Centre d’analyse et de traitement informatique de la langue française (Centre for Computer Processing and Analysis of the French Language) of the University of Nancy (France).

13 The applicant submits that it is necessary, in the present case, to apply by analogy Rule 19(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), according to which OHIM is not to take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time-limit set by it. In particular, the applicant submits that, although the Court of Justice has already stated, with regard to opposition proceedings, that the Board of Appeal has a discretion as to whether or not to take into account evidence which is submitted late, such a possibility exists only in so far as that evidence is relevant to the outcome of the dispute. By analogy, there is no justification, in the present case, for the fact that the documents at issue were not submitted for the first time before the Cancellation Division. The applicant concludes that the Board of Appeal ought to have disregarded them at the stage of the appeal brought before it.

14 It must be borne in mind, in that regard, that it is apparent from the wording of Article 76(2) of Regulation No 207/2009 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties before the departments of OHIM remains possible after the expiry of the periods to which such submission is subject under the provisions of that regulation. OHIM is therefore in no way prohibited from taking account of facts and evidence which are submitted or produced late (Case C-29/05 P OHIM v Kaul [2007] ECR I-2213, paragraph 42).

15 In stating that OHIM ‘may’ decide to disregard facts and evidence, Article 76(2) of Regulation No 207/2009 grants OHIM a wide discretion to decide, while giving reasons for its decision in that regard, whether or not it is justified to take such information into account (OHIM v Kaul, cited in paragraph 14 above, paragraph 43). Where OHIM is called upon to give a ruling in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where OHIM considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (OHIM v Kaul, cited in paragraph 14 above, paragraph 44).

16 In the present case, the Board of Appeal stated, in paragraph 28 of the contested decision, that the documents allegedly produced belatedly by the intervener lent support to the view that the sign AMPLIDECT is descriptive and were, for that reason, relevant to the analysis of the appeal brought before it. The Board of Appeal explained its reasoning, in paragraphs 29 to 31 of the contested decision, by referring to various documents from the file put together by the intervener for the purpose of its appeal against the Cancellation Division’s decision.

17 Without prejudice to the analysis of the second and third pleas set out below, it is common ground that the documents which the intervener filed for the first time before the Board of Appeal were of such a kind as to shed additional light on the perception which the relevant public has of the terms ‘ampli’ and ‘dect’, taken separately or combined to form one single word.

18 Consequently, even if it is assumed that that evidence was submitted belatedly, the Board of Appeal, by agreeing to include it in its analysis, did not in any event exceed the limits of the discretion on which it may rely under Article 76(2) of Regulation No 207/2009.

19 As regards Articles 56 and 57 of Regulation No 207/2009, which were relied on by the applicant at the stage of the reply, these merely describe, first, the formal and substantive requirements for filing an application for revocation or for a declaration of invalidity of a Community trade mark and, secondly, the conditions under which the examination of such an application is carried out by the Cancellation Division. It follows that those provisions are irrelevant in assessing the Board of Appeal’s discretion to take into consideration additional evidence which has been submitted for the first time before it.

The second plea, alleging infringement of Article 7(1)(b) and (c) of Regulation No 207/2009

21 In its second plea, the applicant takes issue with the analysis carried out by the Board of Appeal pursuant to Article 7(1)(b) and (c) of Regulation No 207/2009, at the conclusion of which the mark AMPLIDECT was considered to be descriptive and therefore devoid of any distinctive character.

22 Under Article 4 of Regulation No 207/2009, a Community trade mark may consist of any signs capable of being represented graphically, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

23 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’ may not be registered.

24 Article 7(2) of Regulation No 207/2009 makes clear that a sign is to be refused registration where it is descriptive or is not distinctive in the language of one Member State, even if it is registrable in another Member State (Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 40; see also judgment of 18 June 2009 in Case T-418/07 LIBRO v OHIM – Causley (LiBRO), not published in the ECR, paragraph 68 and the case-law cited).

25 Furthermore, it follows from Article 52(1)(a) of Regulation No 207/2009 that a Community trade mark must be declared invalid, on application to OHIM or on the basis of a counterclaim in infringement proceedings, where that Community trade mark has been registered contrary to the provisions of Article 7 of that regulation.

26 It must be pointed out that a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009 is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) of the regulation (see, by analogy, Case C-265/00 Campina Melkunie [2004] ECR I-1699, paragraph 19, and Case T-260/03 Celltech v OHIM (CELLTECH) [2005] ECR II-1215, paragraph 23). It follows that it is only in the alternative, and solely in cases where the disputed mark is not regarded as descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009, that a possible lack of distinctive character on the part of that mark need be examined.

27 It is therefore necessary to examine, first of all, the head of claim alleging that the Board of Appeal erred in finding that the disputed mark was descriptive.

28 It follows from well-established case-law that, by prohibiting the registration of descriptive signs as Community trade marks, Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, namely that indications or signs which are descriptive of the characteristics of goods or services in respect of which registration is applied for may be freely used by all. That provision therefore prevents such indications or signs from being reserved to a sole undertaking by reason of their registration as trade marks (see, as regards Article 3(1)(c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), which corresponds to Article 7(1)(c) of Regulation No 207/2009, Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, paragraph 25; see also judgment of 7 July 2011 in Case T-208/10 Cree v OHIM (TRUEWHITE), not published in the ECR, paragraph 12).

29 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 the point of view of the target public, to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought (Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-6251, paragraph 39, and Case T-222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II-4995, paragraph 34). Such signs or indications do not fulfil the original function of a mark, which is to identify the commercial origin of the goods or services (see, to that effect, judgment of 16 December 2010 in Case T-497/09 LG Electronics v OHIM (KOMPRESSOR PLUS), not published in the ECR, paragraph 11 and the case-law cited). Therefore, such an assessment of whether a sign is descriptive can be made only, first, in relation to the goods or services concerned and, second, in relation to the understanding which a given target public has of them (Case T-34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II-683, paragraph 38, and CELLTECH, cited in paragraph 26 above, paragraph 28).

30 In the context of an analysis of whether or not it may be descriptive, the mark must, moreover, be considered as a whole (Case C-273/05 P OHIM v Celltech [2007] ECR I-2883, paragraphs 78 to 80).

31 Accordingly, for a trade mark which consists of a word or a neologism produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009, it is not sufficient that each of those components may be found to be descriptive, but the word or neologism itself must also be found to be so (see, by analogy, Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraph 96; see also judgment of 12 June 2007 in Case T-339/05 MacLean-Fogg v OHIM (LOKTHREAD), not published in the ECR, paragraph 30 and the case-law cited).

32 A trade mark consisting of a neologism composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of those characteristics, unless there is a perceptible difference between the neologism and the mere sum of its parts; this presupposes that, because of the unusual nature of the combination in relation to the goods or services, the neologism creates an impression which is sufficiently far removed from that produced by the mere combination of the elements of which it is composed, with the result that the word is more than the sum of its parts (Campina Melkunie, cited in paragraph 26 above, paragraphs 37 to 41, and Case C-408/08 P Lancôme v OHIM [2010] ECR I-1347, paragraphs 61 and 62).

33 Where there is a perceptible difference of that kind, a sufficiently direct and specific association cannot be found to exist between the sign and the categories of goods or services in respect of which registration is sought, as is necessary for a finding that the disputed sign is descriptive (see, by analogy, Case T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 39, and Case T-356/00 DaimlerChrysler v OHIM (CARCARD) [2002] ECR II-1963, paragraph 28).

34 In the present case, the goods covered by the disputed registration include, in particular, cordless telephones equipped with an amplification system and which function with the aid of DECT technology. Such goods are primarily used by persons with a hearing disability. The Board of Appeal pointed out, in paragraph 17 of the contested decision, that those telephones are intended for end consumers who are reasonably well informed and reasonably observant and circumspect. Furthermore, the Board of Appeal analysed the descriptive and non-distinctive character of the disputed mark on the basis, mainly, of the perception which consumers of such goods in France have of that mark.

35 In so far as the applicant does not dispute the definition of the relevant public suggested by the Board of Appeal, and in so far as that definition itself complies with Regulation No 207/2009, it is appropriate to take it as the basis for the examination of the merits of the present action.

36 In paragraph 24 of the contested decision, the Board of Appeal noted that the term ‘ampli’ was, in particular, the abbreviation in French of the noun ‘amplificateur’ (amplifier). Associated with a term which calls telephony to mind, that noun describes a system which makes it possible to amplify the sound produced by a telephone, such as an ‘on-board telephone amplifier’ or a telephone handset which makes use by persons who are hard of hearing possible.

37 Unlike the Cancellation Division, the Board of Appeal also took the view, in paragraph 26 of the contested decision, that the relevant public necessarily made a link between the acronym DECT and telecommunications, in particular cordless telephony. That finding is borne out by the description, on online sales sites in France, of telephones marketed by the applicant which state that those telephones are equipped with DECT technology. The use of such a qualifier would not be justified if the applicant were not convinced that the French public is likely to understanding the meaning of it. That is particularly true of advertisements published on an internet site such as amazon.fr, which is consulted primarily by the general public rather than by a public consisting of specialists.

38 It is, moreover, common ground that the term ‘ampli’ is the abbreviation of the word ‘amplificateur’ (amplifier) in French and that that term is in common parlance. The intervener submitted to the Board of Appeal sufficient evidence of the use of the term ‘ampli’ in connection with telephones in France, taking as its basis, inter alia, a number of internet pages.

39 Observing that no perceptible difference could be found between the neologism ‘amplidect’ and the mere sum of its parts, the Board of Appeal deduced from this that the disputed mark, in the view of the relevant public, described an amplificatory function incorporated in a telephone using DECT technology, which is characteristic of the goods at issue. Since it is descriptive, the disputed mark is also devoid of any distinctive character.

40 The applicant takes issue with that analysis. It submits that the term ‘dect’ does not necessarily evoke a telephone in the view of the relevant public. Although it is true that that term is the acronym for a technology commonly used in the cordless telephony sector, the fact remains that the technology in question has other fields of application, for example baby monitoring alarms (‘baby-phones’) or television, telegraph or radio sets.

41 For the purpose of showing that the French public does not necessarily understand the meaning of the term ‘dect’, the applicant also relies on an online advertisement for the Geemarc Clearsound AmpliDECT 252, one of the cordless telephones which it markets. That advertisement states not only that that device functions by means of DECT technology, but also that it is a ‘cordless telephone’. Such an addition, the applicant submits, is necessary precisely on account of the fact that the relevant public does not make a direct and immediate link between the term ‘dect’ and cordless telephone technology.

42 The term ‘ampli’, according to the applicant, does not refer, as a matter of course or directly, to the telephony sector. It is more frequently used in connection with musical instruments or electrical devices or to designate optical or photographic technology, as shown by a study submitted by the intervener.

43 What is more, in the applicant’s view, the Board of Appeal erred in suggesting that the term ‘ampli’ is a prefix which is commonly linked with other terms to form compound words. The term ‘ampli’ does not therefore have the function of qualifying or describing the word ‘dect’.

44 As regards the term ‘amplidect’ taken as a whole, the applicant submits that it does not have any particular meaning or, at the very least, may have multiple meanings in different contexts. Suggestive rather than descriptive, the term ‘amplidect’ does not create, for the relevant public, a sufficiently direct and specific association with the telephones marketed by the applicant. At most it suggests goods incorporating DECT technology and, at some level, amplification of some sort. Those conclusions apply not only to the French-speaking public, but also and more generally to all consumers in the European Union, whatever language they speak.

45 In that regard, in accordance with the principles set out in paragraphs 23 to 33 above, it is necessary to examine whether the term ‘amplidect’ is a neologism composed of elements each of which is descriptive of the goods covered by the disputed mark, or of essential characteristics of those goods, and to assess whether that neologism itself has such descriptive character.

46 It is not disputed that DECT is the acronym for Digital Enhanced Cordless Telecommunications, a technology internationally recognised in the area of telecommunications.

47 As is apparent from the documents placed on the file, DECT technology is applied mainly in the field of cordless telephony and is recognised as such by the general public. Thus, in addition to the fact that the applicant itself states, in paragraph 25 of its reply, that the term ‘dect’ is understood by the general public in France as relating to that technology, it is not unusual for commercial advertisements for certain telephones to state that those telephones function by means of DECT technology. That is, inter alia, the case with regard to the advertisement for the AmpliDECT 252 telephone marketed by the applicant, in which the term ‘dect’ does not appear solely in the trade mark itself but also in the parts of the advertisement devoted to the description of that product.

48 Like the Board of Appeal, in paragraph 27 of the contested decision, it must therefore be held that the term ‘dect’, taken individually, describes in a sufficiently direct and specific manner a technology applied in the field of cordless telephony. It is of no importance in that regard that the term ‘dect’ is a technical term, as that characteristic alone does not mean that it does not have descriptive character in the view of the relevant consumers (see, by analogy, as regards a technique for transferring digital data from a server, enabling them to be processed as a steady and continuous stream, STREAMSERVE, cited in paragraph 33 above, paragraphs 42 to 44; as regards a turbocompression technique by direct injection in a heat engine, Case T-16/02 Audi v OHIM (TDI) [2003] ECR II-5167, paragraph 31).

49 The term ‘ampli’ is primarily the abbreviation in French of the noun ‘amplification’ (amplification) or of the adjective ‘amplificateur/amplificatrice’ (amplificatory) and has, as such, become part of everyday language. As is apparent from the many examples provided by the intervener, the term ‘ampli’ is most often used by the general public to describe the sound-amplifying function of a product.

50 It is therefore necessary to assess whether the sign AMPLIDECT is itself descriptive of characteristics of the goods covered by the disputed registration.

51 First, as the Board of Appeal was right to point out in paragraph 23 of the contested decision, it is not particularly unusual in French to compose a word from an abbreviation and an acronym, as is illustrated by the expression ‘mini-DVD’. Furthermore, the term ‘ampli’ is regularly used in conjunction with other nouns in that language, as in the expressions ‘ampli de basses’ (bass amplifier), ‘ampli pour home cinéma’ (home cinema amplifier) or even ‘ampli téléphonique de bord’ (on-board telephone amplifier). Those expressions make it possible to infer that the product described is amplified or contains an amplifier. Since the term ‘ampli’ in the disputed mark seeks specifically to describe the function of amplifying a sound, its association with a noun evoking the field of cordless telephony is not unusual for the consumers concerned.

52 It is irrelevant in that regard that the disputed sign deviates from the rules of French grammar since that does not, in any event, create, on the part of the relevant public, an impression which is sufficiently far removed from that produced by the combination of the two elements of which it is composed (see judgment of 16 December 2008 in Case T-335/07 Mergel and Others v OHIM (Patentconsult), not published in the ECR, paragraph 22 and the case-law cited).

53 It is also of little importance that the term ‘amplidect’ may call to mind not only a sound amplification system incorporated in a telephone, but also a separate amplification system for a telephone which is intended to be fixed to the part of the handset comprising the loudspeaker. An absolute ground for invalidity exists where at least one of the possible meanings of a disputed mark describes the goods or services covered by the registration or one of their features (order of the Court of Justice of 13 February 2008 in Case C-212/07 P Indorata-Serviços e Gestão v OHIM, not published in the ECR, paragraph 35, and CARCARD, cited in paragraph 33 above, paragraph 30).

54 As the Board of Appeal correctly pointed out in paragraph 27 of the contested decision, the term ‘amplidect’ immediately and unequivocally informs the relevant public of the essential characteristics of the goods marketed by the applicant and covered by the disputed registration, namely an amplificatory function incorporated in a telephone and using DECT technology. A sufficiently direct and specific link therefore exists, from the point of view of the relevant public, between the disputed mark and the characteristics of that mark. Contrary to what the applicant suggests, it is not necessary, in those circumstances, to establish the existence of a direct and immediate link between the disputed mark and a telephone as such.

55 As OHIM correctly points out, the disputed mark is even more markedly descriptive from the point of view of consumers suffering from impaired hearing, who constitute a part of the applicant’s clientele. The way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (Case T-286/08 Fidelio v OHIM (Hallux) [2010] ECR II-0000, paragraphs 41 to 52, concerning the descriptive character which a sign has by reason of the handicap to which it refers).

56 Although DECT technology is not used solely in goods designed to compensate for such hearing disabilities, the fact none the less remains that the telephones equipped with an amplification system, marketed by the applicant under the disputed mark, are aimed primarily at those consumers. In addition, a person suffering from such disabilities generally pays particular attention to the technical specificities of a telephone which he is thinking of purchasing, as those specificities relate to, inter alia, the sound amplification system of the device or to the presence of an illuminated incoming call button.

57 It follows that, from the point of view of consumers suffering from impaired hearing, whose degree of attention is high, the term ‘amplidect’ naturally evokes a sound amplification function attached to a telephone and, consequently, one of the essential functionalities of the goods concerned. The conjunction which the term ‘amplidect’ establishes between the concepts of amplification and telephony thus reinforces the descriptive character of the disputed mark from the point of view of those consumers.

58 At the stage of the reply, the applicant also puts forward the fact that the sign DECT is already registered as a Community trade mark under registration number 981753, covering, inter alia, cordless telecommunications apparatus and instruments and digital enhanced cordless telecommunications apparatus and instruments. The applicant deduces from this, in essence, that the term ‘dect’ is distinctive and that, since the disputed mark covers the same type of goods, the mere incorporation of the term ‘ampli’ in the sign AMPLIDECT does not mean that that sign does not have distinctive character or, a fortiori, make it descriptive.

59 Even if that head of claim were admissible, although it was made for the first time before the Court, it could not in any event be upheld.

60 As regards the assessment of the distinctive character of a mark, the Court has already had occasion to state that the fact that the mark at issue constitutes part of a mark which has already been registered, even as a Community trade mark, or indeed the development of such a mark, is not relevant, since the assessment of such distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 must be based on that mark’s ability to distinguish the applicant’s goods or services on the market from goods or services of the same type offered by competitors (Case T-139/08 The Smiley Company v OHIM (Representation of half a smiley smile) [2009] ECR II-3535, paragraph 39).

61 A similar principle applies during the examination of the descriptive character of a word mark one of the parts of which has already been registered as a Community trade mark.

62 As has already been stated, the examination carried out pursuant to Article 7(1)(c) of Regulation No 207/2009 relates to whether at least one of the possible meanings of the sign at issue is descriptive of the goods or services concerned or, at the very least, designates a characteristic of those goods or services. As the previously registered mark (DECT) and the disputed mark are not identical, the analyses of any descriptive and non-distinctive character they may have are necessarily wholly separate, even though the goods which they designate are similar in whole or in part.

63 It is, moreover, apparent from settled case-law that the basis for decisions of the Boards of Appeal of OHIM on the registration of signs as Community trade marks is Regulation No 207/2009. The legality of decisions of the Boards of Appeal must therefore be assessed solely on the basis of that regulation, as interpreted by the European Union Courts, and not on the basis of a previous decision-making practice of those boards (Case C-37/03 P BioID v OHIM [2005] ECR I-7975, paragraph 47, and Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I-551, paragraph 48).

64 It follows that, although the registration of the sign DECT as a Community trade mark suggests that that mark is distinctive and non-descriptive, that presumption is subject to the analysis of the term ‘dect’ carried out in the course of invalidity proceedings against another mark in which that term appears.

65 Lastly, still at the stage of the reply, the applicant submits that the mark AMPLIDECT has been the subject of a Benelux registration under the number 088543.

66 Without there even being any need to rule on the admissibility of that head of claim, which was also put forward for the first time before the Court, it is sufficient to point out that, according to well-established case-law, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. Consequently, the registrability of a sign as a Community trade mark or the validity of a Community trade mark must be assessed by reference only to the relevant Community rules, with the result that OHIM and, where appropriate, the European Union Courts are not bound by a decision given in a Member State, or indeed in a third country or by an international organisation, that the sign in question is registrable (Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II-2383, paragraph 37). It follows that the registration of the disputed mark as a Benelux trade mark is of no relevance to the examination of the present case.

67 In view of the foregoing, it must be held, as was also found by the Board of Appeal, that the term ‘amplidect’ is descriptive from the point of view of the relevant public.

68 As it constitutes a sufficient ground for invalidity if the disputed mark is identified as having descriptive character in part of the European Union, it is not necessary to rule on whether the mark may have descriptive character in languages other than French.

69 Moreover, in accordance with the case-law cited in paragraph 26 above, the finding that the mark AMPLIDECT has descriptive character is by itself sufficient for that mark to be regarded as also being devoid of any distinctive character, as the Board of Appeal correctly pointed out in paragraph 33 of the contested decision.

The third plea, alleging infringement of Article 7(3) of Regulation No 207/2009

71 In the context of its third plea, the applicant criticises the Board of Appeal on the ground that it failed to take account of the enhanced distinctiveness which the mark AMPLIDECT has acquired through the use made of it.

72 In paragraph 34 of the contested decision, the Board of Appeal found that the applicant had not provided any evidence of the sale figures which it puts forward in support of its assertion.

73 According to the applicant, more than 68 000 telephones bearing the mark AMPLIDECT have nonetheless been marketed in Belgium, the Czech Republic, Denmark, Germany, Greece, France, Ireland, Italy, Finland, Sweden and the United Kingdom since 1 January 2003. The total turnover represented by the telephones marketed under that trade mark, since its launch, is, it submits, close to EUR 6 million. The Board of Appeal should therefore have recognised that telephones equipped with an amplification system intended for persons suffering from impaired hearing, such as the telephones marketed under the trade mark AMPLIDECT, form a niche market, which is much more limited than that of telephones in general. The substantial degree to which the applicant’s telephones have penetrated that niche market is sufficient to confer distinctive character on the mark AMPLIDECT with regard to the relevant consumers, a significant proportion of whom is likely to be familiar with that mark.

74 In that regard, it must first of all be borne in mind that, under Article 7(3) of Regulation No 207/2009, Article 7(1)(b) and (c) is not to apply if the disputed trade mark has become distinctive in relation to the goods or services concerned in consequence of the use which has been made of it. It follows that a mark which initially had descriptive character for the purposes of Article 7(1)(c) of Regulation No 207/2009 can be maintained, if disputed, only if evidence is provided that it has acquired distinctive character through use in the part of the European Union in respect of which it was found to have descriptive character (see, to that effect, and by analogy, Case C-25/05 P Storck v OHIM [2006] ECR I-5719, paragraphs 82 and 83, and judgment of 17 May 2011 in Case T-7/10 Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia’ v OHIM (υγεία), not published in the ECR, paragraph 41 and the case-law cited).

75 In determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings. In assessing that distinctive character, the following, inter alia, may be taken into account: the market share held by the disputed 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 who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, by analogy, Windsurfing Chiemsee, cited in paragraph 28 above, paragraphs 49 and 51).

76 In that regard, it must be pointed out that the turnover to which the applicant refers in the present case, namely EUR 3.3 million, is approximately two and a half times greater than that which it had put forward in the invalidity proceedings, assessed to be EUR 1.2 million.

77 At the stage of the reply, the applicant also stated that the prices which enabled it to make that calculation were ‘distributor and trade’ prices. The retail price at which the telephones bearing the mark AMPLIDECT are sold would be substantially higher, with the result that the actual turnover would be closer to EUR 6 million.

78 The fact remains that, in addition to not having provided a rational explanation to justify those differences in evaluation, the applicant has not submitted, either before the Board of Appeal or the Court, any document which makes it possible to substantiate those figures.

79 Moreover, the applicant did not provide, in the submissions in the present case, any document to justify the proportion of the turnover put forward which is represented by the AMPLIDECT cordless telephones, or a fortiori the proportion of that figure which was achieved on the French market. It has not, furthermore, submitted any evidence which makes it possible to assess its market share in the sector of cordless telephones specially designed for persons with impaired hearing. The applicant has not therefore shown that the mark AMPLIDECT has acquired distinctive character through the intensive, geographically widespread and long-standing use which has been made of it.

80 Lastly, and more generally, the applicant has failed to submit any form of document, such as a survey or a market study, capable of substantiating in any other way its claim that the mark AMPLIDECT has acquired enhanced distinctiveness with the relevant public.

81 It follows that the applicant has not shown that the mark AMPLIDECT has become distinctive in consequence of the use which has been made of it.

82 The third plea must therefore be rejected as unfounded and, accordingly, the action must be dismissed in its entirety.

83 Under Article 87(2) 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.

84 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Geemarc Telecom v OHMI - Audioline (AMPLIDECT) (Intellectual property) [2011] EUECJ T-59/10 (23 November 2011) URL: http://www.bailii.org/eu/cases/EUECJ/2011/T5910.html Cite as: [2011] EUECJ T-59/10

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