Getty Images v OHIM (Order of the Court) [2013] EUECJ C-70/13 (12 December 2013)

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(Appeal – Community trade mark – Regulation (EC) No 207/2009 – Article 7(1)(b) and (c) – Absolute grounds for refusal – Lack of distinctiveness – Descriptive character – Word mark PHOTOS.COM – Partial refusal of registration – Equal treatment – Obligation for OHIM to take into account its prior decision-making practice – Appeal partly manifestly inadmissible and partly manifestly unfounded)

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 8 February 2013,

Getty Images (US) Inc., established in New York (United States), represented by P.G. Olson, advokat,

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

composed of C.G. Fernlund, President of the Chamber, C. Toader and E. Jarašiūnas (Rapporteur), Judges,

having decided, after hearing the Advocate General, to give its decision by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court,

1 By its appeal, Getty Images (US) Inc. (‘Getty Images’) seeks to have set aside the judgment of the General Court of the European Union of 21 November 2012 in Case T-338/11 Getty Images v OHIM (PHOTOS.COM) (‘the judgment under appeal’), by which the General Court dismissed its action seeking the annulment of the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 6 April 2011 (Case R 1831/2010-2) concerning an application for registration of the word mark ‘PHOTOS.COM’ as a Community trade mark (‘the contested decision’).

2 Under the heading ‘Absolute grounds for refusal’, Article 7 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), provides:

(c) 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 services;

(2) Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.

(3) Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.’

3 On 15 September 2009 Getty Images filed an application for a Community trade mark with OHIM for the word mark ‘PHOTOS.COM’.

4 The goods and services in respect of which registration was sought are in Classes 9, 42 and 45 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 – after the restriction made in the course of the procedure before OHIM – to the following description:

– Class 9: ‘Computer software; computer software to enable searching of data; computer software relating to, downloaded via, or supplied from the internet; downloadable images; physical representations of images stored electronically for electronic manipulation, electronic transfer and/or electronic enhancement; electronic notice boards; magazines, newsletters, newspapers, brochures, weekly publications and other printed matter downloaded via the internet, intranet, extranet or mail servers; computer games programmes downloaded via the internet; CD ROMs; DVDs; videos; tapes; cassettes; computer accessories; screen savers; computer software; computer programs for accessing and interacting with computer networks, computer on line systems, databases, internet, intranet, extranet, LANs, web servers, and e-commerce servers and mail servers; machine readable data; electronic publications (downloadable) provided on line from databases or the internet’;

– Class 42: ‘Installation and maintenance of computer software; information services relating to all the aforesaid services; all the aforesaid services also provided online from a computer database or the internet’;

5 By decision of 2 August 2010, the examiner rejected the aforesaid application for registration, basing the rejection on Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.

6 On 23 September 2010, the applicant lodged an appeal with OHIM against that decision. By the contested decision, the Second Board of Appeal of OHIM (‘the Board of Appeal’) dismissed that appeal on the ground that, in relation to all the goods and services applied for, the word sign ‘PHOTOS.COM’ was descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009, devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation and that it had not been established by Getty Images that that sign had, in particular with regard to the English-speaking part of the European Union, acquired distinctive character through the use which had been made of it within the meaning of Article 7(3) of that regulation.

7 By application lodged at the Registry of the General Court on 30 June 2011, Getty Images brought an action for annulment of the contested decision. In support of its action, the applicant relied on four pleas in law, alleging, respectively: infringement of Article 7(1)(c) of Regulation No 207/2009; infringement of Article 7(1)(b) of that regulation; breach of the principles of equal treatment and of the protection of legitimate expectations; and infringement of Article 7(3) of Regulation No 207/2009.

8 By the judgment under appeal, the General Court dismissed the action as unfounded.

9 In paragraphs 15 to 35 of the judgment under appeal, the General Court examined, only to reject, the plea based on infringement of Article 7(1)(b) of Regulation No 207/2009. In that regard, it held inter alia that the sign in question is made up of two components which are devoid of intrinsic distinctive character and that the combination of those elements is likewise devoid of distinctive character from the point of view of the relevant public. It also pointed out that that sign will be understood from the outset by the relevant public as a domain name and not as identifying the commercial origin of the goods and services for which its registration is sought.

10 In paragraphs 66 and 67 of that judgment, the General Court held that there was no need to examine the plea alleging infringement of Article 7(1)(c) of Regulation No 207/2009, on the ground that it had already concluded that the Board of Appeal was entitled to consider that the sign in question was devoid of distinctive character for the purposes of Article 7(1)(b) of that regulation, that it had not been shown that such distinctive character had been acquired through the use which had been made of that sign within the meaning of Article 7(3) and that, for a sign to be ineligible for registration as a Community trade mark, it is sufficient that one of the absolute grounds for refusal provided for under that regulation applies.

11 In paragraphs 69 and 70 of the judgment under appeal, the General Court rejected the plea alleging infringement of the principles of equal treatment and the protection of legitimate expectations. It held that Getty Images could not usefully rely, in support of the alleged infringement of those principles, on earlier OHIM decisions, since it had been held, in relation to the second plea relied on before it, that the Board of Appeal was entitled to find that the application for registration was defeated by the absolute ground for refusal laid down in Article 7(1)(b) of Regulation No 207/2009. In that regard, the General Court relied on the judgment in Case C-51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I-1541, holding, in essence, that according to that judgment the application of the principles of equal treatment and of sound administration must be consistent with observance of the law and that a stringent and comprehensive examination must be undertaken in each individual case.

13 OHIM contends that the Court should dismiss the appeal and order the appellant to pay the costs.

14 Under Article 181 of the Rules of Procedure of the Court, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

16 In support of its appeal, Getty Images relies on three grounds of appeal, alleging, respectively, infringement of Article 7(1)(b) of Regulation No 207/2009, infringement of Article 7(1)(c) of that regulation and breach of the principles of equal treatment and of the protection of legitimate expectations.

The first ground of appeal, alleging infringement of Article 7(1)(b) of Regulation No 207/2009

17 Getty Images points out that a minimum degree of distinctive character is sufficient to render inapplicable the absolute ground for refusal in Article 7(1)(b) of Regulation No 270/2009. The fact that two PHOTOS.COM word marks have already been registered by OHIM for identical or similar goods or services creates a strong presumption that that minimum distinctiveness is satisfied in the present case. Getty Images also states that the public interest referred to in that provision is the protection of the consumer, by ensuring that he is in a position to distinguish the goods and services of one trader from those of other traders. Given that each domain name is unique and that it indicates, as the General Court stated in paragraph 22 of the judgment under appeal, the site where the goods and services concerned may be obtained, it enables the consumer to distinguish those goods and services from those of that trader’s competititors, thus guaranteeing the protection of the consumer.

18 In addition, the General Court failed, in Getty Images’ view, to apply the principle – which it does however acknowledge in the judgment under appeal – that the mere fact that each of the component parts of a trade mark considered separately is devoid of distinctive character does not mean that their combination cannot be distinctive. The General Court did not examine the sign in question as a whole. The fact that it is a domain name means that its two components are more than the sum of their parts in that that domain name confers on the sign ‘an online dimension’. The General Court therefore erred in law by holding, in paragraph 28 of the judgment under appeal, that the relevant public would not be able to distinguish the goods and services in respect of which registration is sought from those of a different commercial origin.

19 OHIM argues that this ground of appeal is manifestly inadmissible because it seeks to challenge factual appraisals undertaken by the General Court. It is in any case manifestly unfounded. In particular, the General Court did carry out a global assessment of the mark in question, as is clear from paragraphs 25 and 26 of the judgment under appeal.

20 Under Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on a point of law only. The General Court has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence are distorted, constitute points of law subject, as such, to review by the Court of Justice on appeal (see, inter alia, Case C-136/02 P Mag Instrument v OHIM [2004] ECR I-9165, paragraph 39, and Case C-254/09 P Calvin Klein Trademark Trust v OHIM [2010] ECR I-7989, paragraph 49).

21 In addition, according to the second subparagraph of Article 256(1) TFEU, the first paragraph of Article 58 of the Statute of the Court of Justice and Article 169(2) of the Rules of Procedure of the Court of Justice, an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal (see, inter alia, Case C-352/98 P Bergaderm and Groupil v Commission [2000] ECR I-5291, paragraph 34, and order of 21 March 2013 in Case C-341/12 P Mizuno v OHIM, paragraph 27).

22 In the present case, it must be held that, whereas Getty Images, by its arguments stated in paragraph 17 above and by its argument that the fact that the sign at issue constitutes a domain name confers on it a distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009, formulates arguments of a general nature on the scope of Article 7(1)(b) of Regulation No 207/2009, on the objective pursued by that provision and on the consequences which should be derived from it in the light of the facts of the case, it fails to identify precisely the contested elements of the judgment under appeal and seeks essentially to have the Court substitute its own appraisal of the facts for that carried out by the General Court in its examination of the distinctive character of the sign at issue, without alleging that the facts or evidence were in any way distorted. Those arguments are therefore, manifestly inadmissible.

23 In addition, it should be noted that, as is apparent inter alia from paragraph 13 of the judgment under appeal, Getty Images did not rely before the General Court, in the context of its plea alleging an infringement of Article 7(1)(b) of Regulation No 207/2009, on the fact that two marks identical to the sign in question had already been registered in respect of goods and services which were in part identical and in part similar. That argument relating to the alleged relevance of that fact for the purposes of the application of Article 7(1)(b) of Regulation No 207/2009 – which, it is alleged, the General Court failed to take into account – is therefore, in any event, manifestly inadmissible (see, to that effect, order of 28 September 2006 in Case C-104/05 P El Corte Inglés v OHIM and Emilio Pucci, paragraph 40 and case-law cited).

24 Furthermore, to the extent that, by the present ground of appeal, Getty Images alleges that the General Court failed, unlawfully, to examine the sign at issue as a whole in order to assess its distinctiveness within the meaning of Article 7(1)(b) of Regulation No 207/2009, it should be observed that, whereas it is true that the distinctiveness of a mark comprising a number of words or elements may, in part, be assessed by examining each of its terms or elements, taken separately, it must, in any event, depend on an appraisal of the composite whole. The mere fact that each of those terms or elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present such a character (see, inter alia, Case C-329/02 P SAT.1 v OHIM [2004] ECR I-8317, paragraph 28, and Case C-37/03 P BioID v OHIM [2005] ECR I-7975, paragraph 29).

25 However, in paragraphs 24 to 28 of the judgment under appeal, the General Court held as follows:

‘24 … it is appropriate to examine the word sign PHOTOS.COM as a whole. According to settled case-law, the distinctiveness of trade marks composed of words and a typographical sign, such as that at issue in the present proceedings, may, in part, be assessed by examining each of its terms or elements, taken separately, but must in any event depend on an appraisal of the composite whole. The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that in combination they cannot present a distinctive character (see [judgment of 12 December 2007 in Case T-117/06 DeTeMedien v OHIM (suchen.de)], paragraph 31 and the case-law cited).

25 The parties agree on the fact that the word mark PHOTOS.COM, considered as a whole, reproduces the characteristic structure of a second-level domain name (“photos”) and a TLD [top level domain] (“com”), separated by a dot. As the Board of Appeal pointed out, that mark has no additional features – in particular, graphic features – because the dot is typically used to separate the second level domain from the TLD.

26 Furthermore, the addition of the element “.com” to the word “photos”, which is descriptive and devoid of distinctive character, does not render the sign distinctive as a whole. As the Board of Appeal pointed out, the distinctive part of a domain name is not the TLD, which is generic, but the second-level domain – which, in the present case, is devoid of distinctive character.

27 Additionally, it is important to note that, even if the registration of a sign as a Community mark is not conditional upon a finding of a certain level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark, the fact remains that – as the Board of Appeal found – there is no additional element to support the conclusion that the combination created by the commonplace and customary components “photos” and “.com” is unusual, fanciful or might have its own meaning, especially in the perception that the relevant public might have of the goods and services concerned (see, to that effect, [DeTeMedien v OHIM], paragraph 32).

28 Accordingly, in the absence of special characteristics peculiar to the sign at issue, the relevant public’s perception of that sign will be no different from its perception of the combination of the two words comprising the sign. It follows that, as the Board of Appeal rightly pointed out, the relevant public will not be able to distinguish the goods and services covered by the trade mark application from goods and services of a different commercial origin. Consequently, the sign is devoid of distinctive character.’

26 Thus, it is clear from that reasoning that the General Court did indeed examine the possible distinctiveness of the sign at issue with regard to the sign as a whole, in accordance with the case-law mentioned at paragraph 24 of this judgment.

27 Consequently, to the extent that the present ground of appeal seeks to establish an error in law which resulted from the failure of the General Court to take into account the sign as a whole in its assessment of its possible distinctiveness, that ground of appeal has no factual basis and is, therefore, manifestly unfounded.

28 It follows from the foregoing that the first ground of appeal must be rejected in its entirety as being in part manifestly inadmissible and in part manifestly unfounded.

The second ground of appeal, alleging infringement of Article 7(1)(c) of Regulation No 207/2009

29 Getty Images points out that the General Court, having held that the sign for which registration is sought was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009, did not examine the plea relied on before it alleging infringement of Article 7(1)(c) of that regulation. However, in the view of Getty Images, that sign does not describe the goods and services in question in a way contrary to the latter provision, since the sign is a domain name which can have only one proprietor, which may not be freely used by all and which the competitors of Getty Images will not wish to use.

30 OHIM contends that this ground of appeal is manifestly inadmissible because the General Court did not rule on the application of Article 7(1)(c) of Regulation No 207/2009. In any event, for a sign to be ineligible for registration as a Community trade mark, it is sufficient that one of the absolute grounds for refusal applies.

31 By this ground of appeal, Getty Images submits, in essence, that the General Court should have found that the sign in question was not descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009. In that regard, it should be recalled that, as is evident from the wording of Article 7(1) of Regulation No 207/2009, it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be eligible for registration as a Community trade mark (order of 17 January 2103 in Case C-21/12 P Abbott Laboratories v OHIM, paragraph 76; see also, by analogy, Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 29).

32 Since the analysis of the first ground of appeal has not disclosed that the General Court erred in law when holding that an absolute ground for refusal based on Article 7(1)(b) of Regulation No 207/2009 existed and Getty Images does not contest the conclusion in paragraph 64 of the judgment under appeal, according to which, in essence, it had not been proved that the sign at issue had acquired distinctive character through the use made of it, within the meaning of Article 7(3) of Regulation No 207/2009, the General Court was entitled to hold and did not err in law in finding that it did not have to assess whether the sign at issue was descriptive.

The third ground of appeal, alleging breach of the principles of equal treatment and of the protection of legitimate expectations

34 Getty Images claims that, in paragraph 69 of the judgment under appeal, the General Court, attaching excessive importance to the need for an individual assessment of Community trade mark applications, did not correctly balance the principles of equal treatment and sound administration, on the one hand, and the need to ensure that the law is observed, on the other. In that regard, Getty Images states that it is already the proprietor of two word marks identical to the word mark ‘PHOTOS.COM’, the registration of which is sought in the present case, which were registered by OHIM in respect of goods and services identical or similar to those at issue. OHIM failed to explain why it treated the mark at issue differently from the marks registered earlier. Furthermore, in the present case, no mistake was made in the examination of the prior marks. The General Court’s conclusion that there may have been an earlier mistake is therefore inaccurate.

35 In addition, the General Court’s judgment in Case T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, which the General Court did not cite in the judgment under appeal, but on which the Board of Appeal relied in order to dismiss Getty Images’ argument based on the fact that two marks identical to the mark at issue had been registered by OHIM for goods and services identical or similar to those at issue, was not applicable in the present case, given that the facts diverge. The General Court was therefore wrong to state that an earlier mistake was the only explanation for the disparate treatment of similar or identical marks. That judgment should be revisited and, instead of applying a principle that the law should be observed which would require the prior registrations to be deemed mistakes, it should rather be presumed that the previous marks were properly registered.

36 In addition, the facts of the present case must be distinguished from those of the case which led to the judgment in Agencja Wydawnicza Technopol v OHIM. In the present case, since the earlier marks registered and the sign at issue are identical and since the products and services concerned are in part identical and in part very similar, there is a lesser need for OHIM to treat each trade mark application on an individual basis and greater weight should therefore be attached to the principles of non-discrimination and equal treatment. Furthermore, in a State based on the rule of law, predictability in the treatment of trade mark applications is fundamental and OHIM should not enjoy excessive discretion which enables it to treat two identical marks differently.

37 OHIM considers that this ground of appeal is manifestly inadmissible as it seeks to call factual appraisals into question. It is in any event manifestly unfounded, since the General Court did not in any respect err in law in relation to the settled case-law of the Court according to which decisions already adopted in an identical or similar case do not bind OHIM in similar cases.

38 First, it should be noted that arguments in an appeal which criticise the decision whose annulment was applied for before the General Court, rather than the judgment delivered by the General Court following that application for annulment, are inadmissible (orders of 13 January 2012 in Case C-462/10 P Evropaïki Dynamiki v EEA, paragraph 36, and Abbott Laboratories v OHIM, paragraph 86).

39 Therefore, to the extent that the present ground of appeal is directed against reasoning adopted or omitted by the Board of Appeal in the contested decision, or more generally by OHIM, and which does not appear in the judgment under appeal, it must be rejected as manifestly inadmissible.

40 Second, in paragraph 69 of the judgment under appeal, the General Court confined itself to restating the case-law of the Court arising from Agencja Wydawnicza Technopol v OHIM, observing inter alia in that regard 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 to the benefit of someone else’. The General Court did not however rule on whether the earlier decisions of OHIM – on which Getty Images relied before it in order to establish a breach of the principles of equal treatment and of the protection of legitimate expectations – were mistaken or not. Consequently, there is no factual basis for the argument that the General Court erred in law by holding that the examination of the earlier marks which led to those decisions was mistaken. Thus, that argument is manifestly unfounded.

41 Third, it should be recalled that OHIM is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration (Agencja Wydawnicza Technopol v OHIM, paragraph 73).

42 In the light of the two last mentioned principles, 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 special care whether it should decide in the same way or not (Agencja Wydawnicza Technopol v OHIM, paragraph 74 and case-law cited).

43 That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with observance of the law. Consequently, 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 to the benefit of someone else (Agencja Wydawnicza Technopol v OHIM, paragraphs 75 and 76 and case-law cited).

44 Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, 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 (Agencja Wydawnicza Technopol v OHIM, paragraph 77 and case-law cited).

45 Furthermore, according to the case-law of the Court, the considerations in paragraph 41 to 44 above apply even if the sign whose registration is sought as a Community trade mark is composed in a manner identical to that of a mark in respect of which OHIM already approved registration as a Community trade mark and which refers to goods or services identical or similar to those in respect of which registration of the sign in question is sought (see, by analogy, in relation to Article 3(1)(b) and (c) of the 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), order of 12 February 2009 in Joined Cases C-39/08 and C-43/08 Bild digital and ZVS, paragraphs 15 to 19).

46 In the present case, it has been established that the application for registration at issue was caught, having regard to the products and services for which registration was sought and the perception of the class of persons concerned, by the absolute ground for refusal stated in Article 7(1)(b) of Regulation No 207/2009 and was not covered by Article 7(3) of that regulation.

47 Accordingly, the General Court was entitled to hold, in paragraph 70 of the judgment under appeal, that, in the light of the conclusion arrived at by it in the preceding paragraphs of that judgment, according to which registration of the word mark ‘PHOTOS.COM’ as a Community trade mark in respect of the products and services mentioned in the application for registration, as restricted, was incompatible with Regulation No 207/2009, Getty Images could not usefully rely – in support of the alleged breach of the principles of equal treatment and of the protection of legitimate expectations, claimed in order to challenge that conclusion – on earlier OHIM decisions.

48 Getty Images’ arguments alleging breach of the principles of equal treatment and of the protection of legitimate expectations are, therefore, manifestly unfounded.

49 Consequently, this ground of appeal must be rejected as being in part manifestly inadmissible and in part manifestly unfounded.

50 It follows from all of the above considerations that the appeal must be dismissed in its entirety as being in part manifestly inadmissible and in part manifestly unfounded.

51 Under Article 138(1) of the Rules of Procedure, which applies to appeal proceedings pursuant to Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As OHIM sought an order for costs against Getty Images and the latter has been unsuccessful, Getty Images must be ordered to pay the costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Getty Images v OHIM (Order of the Court) [2013] EUECJ C-70/13 (12 December 2013) URL: http://www.bailii.org/eu/cases/EUECJ/2013/C7013_CO.html Cite as: [2013] EUECJ C-70/13

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