Distintiva Solutions v EUIPO - Makeblock (Makeblock) (EU trade mark - Judgment) [2022] EUECJ T-86/21 (02 March 2022)

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(EU trade mark – Invalidity proceedings – EU figurative mark Makeblock – Absolute grounds for refusal – Distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009 (now Article 7(1)(b) of Regulation (EU) 2017/1001) – No descriptive character – Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001) – Mark not of such a nature as to mislead the public – Article 7(1)(g) of Regulation No 207/2009 (now Article 7(1)(g) of Regulation 2017/1001))

Distintiva Solutions S. Coop. Pequeña, established in Vitoria-Gasteiz (Spain), represented by M. Sanmartín Sanmartín, lawyer,

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and V. Ruzek, acting as Agents,

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

Makeblock Co. Ltd, established in Shenzhen (China), represented by C. Sueiras Villalobos, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 16 November 2020 (Case R 988/2020‑5), relating to invalidity proceedings between Distintiva Solutions and Makeblock,

composed of G. De Baere, President, G. Steinfatt (Rapporteur) and K. Kecsmár, Judges,

having regard to the application lodged at the Court Registry on 8 February 2021,

having regard to the response of EUIPO lodged at the Court Registry on 10 May 2021,

having regard to the response of the intervener lodged at the Court Registry on 3 June 2021,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 24 October 2013, Shenzhen Maker Works Co. Ltd, the predecessor to the intervener Makeblock Co. Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods in respect of which registration was sought are in Classes 7, 16 and 28 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 7: ‘Handling machines, automatic [manipulators]; Robots [machines]’;

4 The trade mark application was published in Community Trade Marks Bulletin No 2013/209 of 4 November 2013. The contested mark was registered on 11 February 2014 under No 12 249 488 for the goods referred to in paragraph 3 above.

5 On 11 May 2018, the applicant, Distintiva Solutions S. Coop. Pequeña, applied, pursuant to Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b), (c), (e) and (g) thereof, for a declaration of invalidity of the contested mark in respect of the goods referred to in paragraph 3 above.

6 By decision of 23 March 2020, the Cancellation Division of EUIPO rejected the application for a declaration of invalidity in its entirety.

7 On 19 May 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division. Its appeal sought the annulment in part of that decision, in so far as it had rejected the application for a declaration of invalidity as regards the goods in Classes 7 and 28 (‘the goods concerned’).

8 By decision of 16 November 2020 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal.

9 First, as regards the relevant public, the Board of Appeal found that the goods in question were aimed at both the general public and professionals. The level of attention was not higher than average for the goods in Class 28. However, the level of attention would be higher for the goods in Class 7 given that those goods require technical know-how and can be quite expensive. In so far as the contested mark consists of English words, it was necessary to take into account the public in the English-speaking territory of the European Union, that is to say, the United Kingdom, Ireland and Malta.

10 Secondly, as regards the ground for invalidity referred to in Article 7(1)(c) of Regulation 2017/1001, the Board of Appeal found that, although the combination of the words ‘make’ and ‘block’ in the contested mark would be understood as an invitation or request to ‘create or construct a block’ (for example: a solid piece of glass, wood, or concrete; a building; a block of text, and so on), the applicant had not shown that the relevant English-speaking public would establish a sufficiently direct mental link between the meaning of ‘makeblock’ and the goods concerned. There were no indications that the goods concerned served to ‘make a block’. The Board of Appeal concluded that the evidence adduced by the applicant was insufficient to demonstrate that the contested mark was actually used on the market to describe characteristics of the goods concerned at the time the contested mark was filed. Furthermore, it could not be assumed from the documents submitted by the applicant that the public perceived the contested mark as a mere indication of the kind, purpose or other characteristics of the goods at that time. At most, according to the Board of Appeal, the mark might be suggestive in the sense that some of the goods are vaguely related to ‘blocks’. However, the combination of the two terms constituting the sign is not merely descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001. In addition, the figurative element representing a gear device is not a simple geometric shape and does not underline the message conveyed by the word ‘makeblock’. The relationship between a gear device and the invitation to ‘make a block’ is not clear. In short, the contested mark as a whole passes the threshold of a merely descriptive sign.

11 Thirdly, the Board of Appeal found that the absolute ground for invalidity referred to in Article 7(1)(b) of Regulation 2017/1001 was not applicable. In that regard, it found that the contested mark was capable of distinguishing the goods concerned in terms of their origin. Furthermore, according to the Board of Appeal, there were no indications that the relevant public would perceive the mark as a purely laudatory message or as a mere factual or social statement. The figurative element of the gear device supports that conclusion.

12 Fourthly, as regards Article 7(1)(g) of Regulation 2017/1001, the Board of Appeal found that the contested mark did not actually deceive consumers and that there was no serious risk that the relevant public would be misled when confronted with the contested mark in relation to the goods concerned. According to the Board of Appeal, the mark might at most be perceived as being vaguely allusive with regard to some of the goods in the sense that they might have a connection with ‘blocks’, such as, for example, toys or robots consisting of toy building blocks. However, when seeing the mark as a whole, the public would not understand that mark as describing characteristics of those goods.

– dismiss the action and, consequently, uphold the contested decision and confirm the rejection of the application for a declaration of invalidity of the contested mark in its entirety;

16 The applicant relies, in essence, on four pleas in law, alleging: (i) infringement of Article 59 of Regulation 2017/1001, read in conjunction with Article 7(1)(c) of that regulation; (ii) infringement of Article 59 of Regulation 2017/1001, read in conjunction with Article 7(1)(b) of that regulation; (iii) infringement of Article 59 of Regulation 2017/1001, read in conjunction with Article 7(1)(g) of that regulation; and (iv) failure to fulfil the obligation to state reasons.

17 The applicant complains that the Board of Appeal erred, first, in holding that the contested mark had no descriptive character in relation to the goods concerned, second, in finding that the contested mark had a distinctive character with regard to the goods concerned, third, in deciding that the contested mark was not misleading with regard to the goods concerned and, fourth, in failing to take sufficient account of the arguments and evidence put forward by the applicant.

19 Regulation No 207/2009, which entered into force on 13 April 2009, was amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), before being repealed and replaced, with effect from 1 October 2017, by Regulation 2017/1001. However, since the decisive date for identifying the applicable substantive law is the date on which the application for registration was filed, that is to say, 24 October 2013, the present dispute continues to be governed by Regulation No 207/2009, at least as regards provisions that are not strictly procedural (see, to that effect and by analogy, judgments of 2 March 2017, Panrico v EUIPO, C‑655/15 P, not published, EU:C:2017:155, paragraph 2 and the case-law cited, and of 3 June 2021, Yokohama Rubber and EUIPO v Pirelli Tyre, C‑818/18 P and C‑6/19 P, not published, EU:C:2021:431, paragraph 2). In addition, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.

20 Consequently, in the present case, as regards the substantive rules, the references to the provisions of Regulation 2017/1001, made by the Board of Appeal in the contested decision and by the applicant, EUIPO, and the intervener in their pleadings, should be understood as referring to the provisions of Regulation No 207/2009 having identical content.

The general reference to the arguments put forward during the procedure before EUIPO

21 In paragraph 17 et seq. of the application, the applicant makes a general reference to, inter alia, the facts and arguments set out in the notice of appeal that it had filed with the Board of Appeal, as well as to the written pleadings which it had filed with the Cancellation Division on 23 July and 21 December 2018 respectively.

22 The applicant cannot validly refer the Court to all the arguments which it put forward in the proceedings before EUIPO. It is not for the Court to take on the role of the parties by seeking to identify the relevant material in the documents to which they refer. It follows that the application, to the extent that it refers to the written submissions to EUIPO, is inadmissible in so far as the general reference which it contains cannot be connected to pleas and arguments developed in that application (see, to that effect, judgment of 15 December 2016, Keil v EUIPO – NaturaFit Diätetische Lebensmittelproduktion (BasenCitrate), T‑330/15, not published, EU:T:2016:744, paragraph 13 and the case-law cited).

23 However, contrary to what the intervener appears to claim, the application is not inadmissible merely because the applicant has reused certain passages from its written submissions lodged with EUIPO.

Admissibility of the first part of the form of order sought by the intervener

24 The intervener, in the first part of the form of order sought by it, contends not only that the action should be dismissed, but also that the Court should uphold the contested decision and reject the application for a declaration of invalidity of the contested mark. It must be noted that the aim of that second limb of the first part of the form of order sought is to obtain a confirmatory ruling from the Court.

25 It follows, however, from Article 72(2) and (3) of Regulation 2017/1001 that an action brought before the Court under those provisions seeks to have the lawfulness of decisions of the Boards of Appeal examined and to obtain, as the case may be, the annulment or alteration of those decisions, with the consequence that such an action cannot have the objective of obtaining confirmatory or declaratory rulings in respect of those decisions (see judgment of 10 June 2008, Gabel Industria Tessile v OHIM – Creaciones Garel (GABEL), T‑85/07, EU:T:2008:186, paragraph 17 and the case-law cited).

26 Accordingly, the second limb of the first part of the form of order sought by the intervener must be rejected as inadmissible.

The first plea in law, alleging infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof

27 By its first plea in law, the applicant submits, in essence, that the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009 in finding that the contested mark was not descriptive. The applicant notes that the trade mark is descriptive of the characteristics and intended purpose of the goods concerned, since Makeblock would be perceived by the relevant public as describing goods that are either made from blocks or used to make blocks. According to the applicant, the Board of Appeal did not properly take into account that understanding by the relevant public and failed to assess the descriptive characteristics of the goods.

28 First, the Board of Appeal incorrectly restricted its examination to the issue of whether the relevant public would perceive the term ‘makeblock’ in the contested mark as an invitation to build blocks with other blocks. For the relevant consumer, the term ‘makeblock’ does not mean ‘to build blocks’, but ‘to join a portion of something together to get a different product’. That broader interpretation is confirmed by the drawn element within the sign in question, which acts as the vowel ‘o’ and represents a gear device, since the gear device also refers to the concept of combining pieces to make or build something (like a block).

29 In addition, the expression ‘make block’ or ‘make a block’ has been used on the market since at least 2006. Since it is familiar to the consumer, there will be no ‘mental leap’ when interpreting the word ‘makeblock’, which refers to information about the characteristics, components or intended purpose of the toys and robots covered by the mark.

30 Secondly, the expression ‘make block’ or ‘make a block’ does not refer only to one of the intended purposes or uses of the goods concerned but is at the same time the usual means of describing the way in which the designated goods are manufactured. In relation to the goods in Class 7, the applicant submits that the robots sold by the intervener are thus made up of pieces which form a block. Products sold as robots or as electronic components to be used for educational purposes are assembled by forming blocks or assembling blocks or pieces. In addition, the applicant submits that it is possible to use the universal Scratch instruction ‘Make a block’ or the programming instruction ‘make blocks’ when programming those products. As regards the goods in Class 28, the applicant states that the toys marketed using the sign Makeblock are made up of pieces which form a block.

31 Thirdly, the applicant argues that the figurative element in the contested mark representing a gear device is descriptive of the goods concerned, given that it resembles one of the pieces present in all the products sold by the intervener.

32 Fourthly, the applicant disputes that the consumer’s level of attention is always high when goods in Class 7 or robots are concerned.

33 Fifthly, the applicant submits that it would be excessive to consider the contested mark as descriptive only if it were associated with building block games, the sole purpose of which is precisely to build blocks.

35 Article 7(1)(c) of Regulation No 207/2009 states that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered. Pursuant to Article 7(2) of that regulation, paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

36 Those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely identifying the commercial origin of the goods or service (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).

37 The public interest underlying Article 7(1)(c) of Regulation 2017/1001 is that of ensuring that signs which describe one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services (see judgment of 23 May 2019, Arçelik v EUIPO (MicroGarden), T‑364/18, not published, EU:T:2019:355, paragraph 16 and the case-law cited).

38 It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a link between the sign and the goods or services concerned that is sufficiently direct and specific to enable the relevant public immediately, and without further thought, to perceive a description of the goods and services concerned or of one of their characteristics (see judgment of 11 April 2019, Adapta Color v EUIPO – Coatings Foreign IP (ADAPTA POWDER COATINGS), T‑223/17, not published, EU:T:2019:245, paragraph 69 and the case-law cited).

39 By using the terms ‘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’ in Article 7(1)(c) of Regulation No 207/2009, the EU legislature made it clear, first, that those terms must all be regarded as corresponding to characteristics of goods or services and, second, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account (see judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 42 and the case-law cited).

40 The fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 207/2009 are merely those which serve to designate a property, easily recognisable by the relevant public, of the goods or the services in respect of which registration is sought. Consequently, a sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant public as a description of one of those characteristics (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50, and of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 32). Thus, a sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant persons have of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).

41 As regards the meaning of the word element ‘makeblock’ for the relevant public, the Board of Appeal concluded, in the contested decision, that the combination of the English words ‘make’ and ‘block’, written together in a single word in dark letters and with the letter ‘o’ in the second word being replaced by the figurative element representing a gear device, would be understood as an invitation or request ‘to create or construct a block’ (for example: a solid piece of glass, wood, or concrete; a building; a block of text, and so on).

42 According to the applicant, the Board of Appeal’s interpretation is too narrow. In the first place, for the relevant public, ‘makeblock’ does not mean ‘to build blocks’, but ‘to join a portion of something together to get a different product’.

43 According to the applicant, the consumer does not need to make a mental effort to understand that ‘to make a block’ is equivalent to putting something together to get a result. In order to substantiate that assertion, the applicant relies on the fact that the University of Washington uses a mathematical method called ‘Make Block’.

44 However, first, the applicant does not explain in what context and in what sense the University of Washington uses that mathematical method. In particular, it does not establish a connection between that method and the goods covered by the contested mark. Second, it is not clear that European consumers of robots or toys are aware of the mathematical methods used by an American university, even if it is assumed, as the Board of Appeal does, that the relevant public has a high level of attention as regards robots.

45 In that regard, the applicant’s assertion that the consumer’s level of attention is not always high in relation to goods in Class 7 or robots cannot succeed, since it is difficult to assume that the public with an average level of attention would be aware of those mathematical methods. In any event, the applicant has not substantiated its assertion.

46 In addition, it should be noted that the applicant did not call into question the definition of the word ‘block’ provided in the contested decision and that that decision reproduced documents which the applicant had itself submitted in the proceedings before the Board of Appeal. According to that definition, a ‘block’ is, in particular, ‘a large solid piece of hard material’, ‘a large single building’, ‘a large quantity of things’ (‘a block of shares’, ‘a block of text’) or ‘an obstacle to the normal progress [of something]’ (‘a block to career advancement’) (www.lexico.com/definition/block, Annex II to the statement setting out the grounds of the applicant’s appeal before EUIPO).

47 As EUIPO has correctly noted, there is no basis in the dictionaries for the definition used by the applicant in its application. The applicant’s explanation that different versions of the expression ‘make a block’ are used in computer programming languages is not sufficient to substantiate its assertion that the relevant public perceives the meaning of that expression immediately, without further thought, in a sense which does not correspond to the meaning listed in the dictionaries or to the meaning attributed to that expression in programming language itself, but in the more abstract sense reproduced in paragraph 43 above. Moreover, the goods covered by the contested mark are neither software nor games similar to ‘Scratch’, to which the applicant refers, but rather much broader and very general categories consisting of handling machines and robots, and of toys.

48 In the second place, as regards the applicant’s argument that the message conveyed by the term ‘makeblock’ in relation to a product is not necessarily a reference to the use of the designated product as it could also be a reference to its manufacture, it should be noted, first of all, that it is apparent from the concordant linguistic analyses of the applicant and of the Board of Appeal that the word ‘make’ represents the imperative form and expresses an invitation or request. In trade, in order to convey information about the manufacture of a product, it is common to use the past participle form, namely ‘made’, as, for example, in the expression ‘made in Germany’ or ‘handmade’. Therefore, the interpretation proposed by the applicant is not covered by the terminology used in the sign.

49 It is as part of that line of reasoning that EUIPO correctly observes that the word ‘block’ appears in the singular in the contested mark. If the word element were meant to be understood as referring to the manufacture of the goods in question from blocks, it would be necessary to use the plural.

50 In addition, even if the relevant public, on the basis of its alleged knowledge of programming languages and their commands, was accustomed to understanding the word ‘block’ in a more abstract sense and if, on that basis, the applicant’s interpretation that the term ‘makeblock’ merely suggests an activity of assembling parts in order to build something was to be accepted, it would no longer be content which describes a characteristic of a product. The intervener rightly remarks that the mere fact that the term ‘makeblock’ may be associated with the idea of putting blocks together to form something is not sufficient for the contested mark to be considered descriptive of the goods concerned, since the fact that goods result from the assembly of different parts is a trait common to most man-made goods.

51 In relation to the importance of the figurative element representing a gear device in the assessment of the descriptive character of the contested mark, it must be borne in mind that, according to settled case-law, in the case of a composite sign, the overall impression given by that sign must be taken into consideration. This does not mean, however, that the various components of which that trade mark is composed may not be examined first (judgments of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 82, and of 15 March 2018, Hermann Bock v EUIPO (Push and Ready), T‑279/17, not published, EU:T:2018:149, paragraph 27).

52 As the applicant rightly notes, the drawing of a gear device, integrated into the word element ‘makeblock’, does not prevent the public from grasping the meaning of the term ‘makeblock’, since that gear device is clearly a decorative version of the letter ‘o’.

53 However, contrary to the applicant’s assertions, that figurative element cannot be considered as reinforcing the meaning of the word element. Although the icon of the gear device may, as the applicant correctly notes, be regarded as a symbol representing the functioning or creation of something, the creation of something with a gear device involves a high level of mechanics which does not correspond to that of a construction made from blocks or used in order to form a block. Building using blocks alludes more to the world of children whereas the gear device is intended for precision mechanics and alludes to the world of engineers. The drawing of the gear device does not therefore contribute to clarifying the message of the word element, but dilutes a possible idea of construction of blocks or from blocks.

54 It follows that the applicant has not shown that the combination, in the sign in question, of the elements ‘make’ and ‘block’, coupled in a compound artificial term, on the one hand and of the gear device, on the other, expresses any kind of clear statement. As observed by the Board of Appeal and the intervener, it must be held that the composition is at most suggestive in nature.

The sufficiently direct and specific link between the contested mark and the goods concerned

55 Given that the sign in question does not convey a clear message, let alone a description of a characteristic of certain goods (see, in that regard, paragraphs 42 to 50 above), it cannot be argued that there is a sufficiently direct and specific link between the contested mark and the goods concerned. In view of the vague nature of the contested mark, which at best contains a general and suggestive reference to the world of construction activities, it must be concluded that the relevant public will not immediately perceive, without further thought, a description of the goods concerned.

56 The Board of Appeal was therefore fully entitled to find that there was no sufficiently direct and specific link between the contested mark and the goods concerned which would justify that mark being caught by the absolute ground for invalidity set out in Article 7(1)(c) of Regulation No 207/2009.

The second plea in law, alleging infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) thereof

58 First of all, the applicant disputes the Board of Appeal’s finding that the contested mark has distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. It submits that, even if a given term were not clearly descriptive of the goods and services concerned within the meaning of Article 7(1)(c) of that regulation, it would still be possible to form an objection on the basis of Article 7(1)(b) of that regulation, on the ground that the term will be perceived by the relevant public as providing information only on the nature of the goods in question and not on their origin. That was the case when registration of the figurative mark PICK & WIN, as well as registration of the word mark medi, was refused on the ground of lack of distinctive character, the situation in the present case being comparable to that of those cases. According to the applicant, the Court should, as in the PICK & WIN case, find that Makeblock lacks a fanciful element.

59 Next, the applicant complains that the Board of Appeal did not assess the explanatory or laudatory character of the sign, which, in the present case, can be inferred both from the packaging of the trade mark proprietor’s own robot and from what the trade mark proprietor has displayed on its websites. In the presence of a product bearing the sign Makeblock, the consumer will immediately think of building from blocks or of joining blocks together to make something. That meaning is also illustrated by the slogans on the packaging of some of the goods marketed under the contested mark, namely ‘Construct Your Dreams’ or ‘Make Your Ideas Rock!’.

60 Furthermore, the applicant argues that the distinctive character of the figurative element used in the contested mark is diminished, since the representation of a gear device refers to instructions relating to mechanical goods. That graphical form of the letter ‘o’ describes one of the necessary pieces of all the products sold by the intervener.

62 Under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered. Under Article 7(2) of that regulation, paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

63 According to settled case-law, for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009, the sign must serve to identify the product or service in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish that product or that service from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).

64 The descriptive signs referred to in Article 7(1)(c) of Regulation No 207/2009 are also devoid of any distinctive character for the purposes of Article 7(1)(b) of that regulation. Conversely, a sign may be devoid of distinctive character for the purposes of Article 7(1)(b) for reasons other than the fact that it may be descriptive (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 46).

65 In order to assess whether or not a trade mark has any distinctive character, the overall impression given by that mark must be taken into consideration. This does not mean, however, that each of the individual features of the get-up of the mark may not first be examined in turn (see judgment of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 82 and the case-law cited).

66 In the first place, the applicant argues that the contested mark refers to the nature of the goods covered, with the result that that mark is devoid of any distinctive character.

67 In that regard, it should be noted that the contested mark consists of a word element, which in turn comprises the English words ‘make’ and ‘block’, and of a figurative element representing a gear device.

68 It is true that those two elements refer to the field of construction. However, they hardly fit with the image of a gear device which is used for sophisticated mechanical constructions and, in principle, is not used with blocks but with finer parts. The combination of those elements does not therefore enable any information to be inferred therefrom regarding the goods marketed under that sign. The sign as a whole does not convey any information about the goods in Classes 7 and 28 that is readily discernible to the consumer.

69 In support of its argument, the applicant relies on case-law according to which the term ‘medi’ was considered to be devoid of any distinctive character since, in the field covered by the mark applied for, the relevant public perceives the sign medi as providing details of the type of goods or services which it designates, in this case their intended purpose – medical or healthcare use – or their reference to the medical field, and not as indicating the origin of those goods and services (see judgment of 12 July 2012, medi v OHIM (medi), T‑470/09, EU:T:2012:369, paragraph 36 and the case-law cited).

70 However, the term ‘makeblock’ is not comparable to the term ‘medi’, inasmuch as it does not provide the relevant public with details of the type of goods which it designates. On the contrary, that term does not express any message that the consumers of products such as robots or toys will easily understand.

71 Thus, the applicant’s first argument that the contested mark describes characteristics of the goods in question and is therefore not capable of distinguishing the origin of the goods in Classes 7 and 28 must be rejected.

72 In the second place, the applicant complains that the Board of Appeal did not assess the laudatory or explanatory character of the contested mark. Contrary to what the intervener contends, that argument does not alter the subject matter of the dispute in the proceedings before the Court, since EUIPO dealt with the allegedly laudatory character of the sign in paragraph 47 of the contested decision.

73 However, that argument by the applicant, based on the use of the contested mark on the packaging of the intervener’s products, where that mark appears next to the image of a robot-builder, together with the slogans ‘Construct Your Dreams’ or ‘Make Your Ideas Rock!’, is not convincing. The actual use of the contested mark has no effect on its inherent distinctive character, which must be assessed solely in the light of its representation provided with the application for registration. It is only in the context of the application of Article 7(3) of Regulation No 207/2009 that the actual use of a sign for which registration is sought must be assessed (judgment of 6 June 2019, Ortlieb Sportartikel v EUIPO (Representation of an octagon), T‑449/18, not published, EU:T:2019:386, paragraphs 34 and 35).

74 Furthermore, contrary to the applicant’s assertions, the contested mark is not comparable to the figurative mark PICK & WIN. In that regard, in the judgment of 9 April 2019, ZITRO IP v EUIPO (PICK & WIN MULTISLOT) (T‑277/18, not published, EU:T:2019:230, paragraph 19), the Court held that a mere advertising slogan is devoid of distinctive character, unless the mark can be perceived from the outset by the relevant public, beyond its promotional function, as an indication of the commercial origin of the goods in question. The applicant does not state that the sign Makeblock is, in itself, a slogan or part of a slogan. Rather, it is apparent from the evidence adduced by the applicant that the contested mark is used in combination with slogans.

75 In the third place, the applicant’s argument that the contested mark lacks a fanciful element must be rejected.

76 In that regard, it is sufficient to recall that the registration of a sign as an EU trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark should enable the relevant public to identify the origin of the goods or services protected thereby and to distinguish them from those of other undertakings (judgment of 16 September 2004, SAT.1 v OHIM, C‑329/02 P, EU:C:2004:532, paragraph 41).

77 Thus, the applicant cannot rely on the judgment of 9 April 2019, PICK & WIN MULTISLOT (T‑277/18, not published, EU:T:2019:230, paragraph 26), in which the Court found that the expression ‘pick & win multislot’ did not contain any fanciful element that could enable the relevant public to memorise it immediately and easily as a distinctive mark for the goods and services covered.

78 In that regard, account must be taken of the context of the PICK & WIN case, where the General Court emphasised that the word expression in question had a clear meaning, since the word ‘win’ conveys a clearly laudatory message, according to which the goods and services covered by the mark applied for are intended to ensure that the consumer has multiple opportunities to win. It is in that context that the Court found that the mark applied for did not have a sufficient degree of originality to be capable of indicating to the consumer the commercial origin of the goods and services concerned (judgment of 9 April 2019, PICK & WIN MULTISLOT, T‑277/18, not published, EU:T:2019:230, paragraphs 28 to 30).

79 Thus, that case concerns conditions which do not arise in the present case, since the word element ‘makeblock’ does not convey any clear message (see paragraph 41 et seq. above). It is by virtue of the combination of the words ‘make’ and ‘block’ and of the figurative element of the gear device that those elements, which are all usual in themselves, form a sign which, as a whole, is not usual, since, as stated in paragraph 68 above, the verbal elements hardly fit with the figurative element.

80 In any event, the combination of elements communicating allusions and suggestions rather than factual statements, as in the contested mark, constitutes a creation which, in fact, includes a certain fanciful element.

81 In the fourth place, it is necessary to reject the applicant’s argument inasmuch as the applicant argues that the distinctive character of the figurative element used in the contested mark is diminished due to the fact that the representation of a gear device refers to instructions relating to mechanical goods. That graphical form of the letter ‘o’ describes one of the necessary pieces of all the products sold by the intervener.

82 First, it has already been found in paragraph 27 et seq. above that the contested mark is not descriptive.

83 Second, according to the case-law cited in paragraph 65 above, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by that trade mark must be taken into consideration. Since the figurative element is fully integrated into the word element of the contested mark, it is not possible to assess its impact in isolation.

84 It is apparent from the foregoing that the applicant’s second plea in law must be rejected.

The third plea in law, alleging infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(g) thereof

85 By its third plea in law, the applicant argues that the Board of Appeal erred in finding that the contested mark was not misleading.

86 First, the applicant appears to dispute the Board of Appeal’s findings that the contested mark is not misleading in relation to broad categories of goods, in particular robots in Class 7 and building blocks (toys).

87 Second, the applicant argues that not only are those goods very specific, but the word ‘make’, a verb that is widely used in creative or programming activities or in games involving blocks, could be used as the equivalent of ‘build’.

89 Under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to the procedure before the General Court pursuant to the first paragraph of Article 53 of that same statute, and under Article 177(1)(d) of the Rules of Procedure of the General Court, the application made in the context of an action brought against EUIPO must contain, inter alia, the subject matter of the dispute and a brief statement of the pleas in law relied on. It must, accordingly, specify the grounds on which the action is based, with the result that a mere abstract statement of the grounds is not sufficient to satisfy the requirements of the Statute of the Court of Justice of the European Union and the Rules of Procedure. Moreover, that statement, albeit brief, must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary, without any further information. In order to ensure legal certainty and the sound administration of justice, it is necessary, if an action or, more specifically, a plea in law, is to be admissible, that the basic legal and factual particulars relied on be indicated coherently and intelligibly in the application itself (see judgment of 13 May 2020, Peek & Cloppenburg v EUIPO – Peek & Cloppenburg (Peek & Cloppenburg), T‑444/18, not published, EU:T:2020:185, paragraph 26 and the case-law cited).

90 In the present case, the applicant’s arguments that the contested mark is misleading (see paragraphs 86 and 87 above) are not intelligible. In paragraphs 109 to 111 of its application, the applicant states that it disputes the Board of Appeal’s findings rejecting the potentially misleading nature of the mark, but it does not specify which of those findings it seeks to dispute. Moreover, as is rightly argued by EUIPO, the applicant does not explain how the contested mark could actually deceive the relevant public or give rise to a serious risk of such deception.

91 In addition, the only factual elements relied on by the applicant in paragraphs 109 and 110 of its application are, first, that the contested mark designates broad categories of goods and, second, that the goods in question are very specific. However, it is not apparent from the wording of those paragraphs of the application which specific goods are concerned, or how the existence of deception within the meaning of Article 7(1)(g) of Regulation No 207/2009 is to be assessed. In that regard, the applicant has failed to present a coherent line of argument, as is rightly noted by EUIPO.

92 In the light of the foregoing, the third plea in law relied on by the applicant must be rejected as inadmissible.

The fourth plea in law, alleging a failure to fulfil the obligation to state reasons

93 Lastly, the applicant complains that the Board of Appeal did not state to the requisite legal standard the reason why it found that certain items of evidence submitted under Article 7(1)(c) of Regulation No 207/2009 were invalid or insufficient.

94 Similarly, the applicant criticises the Board of Appeal for not taking account of all the arguments put forward regarding the case-law concerning Article 7(1)(b) of Regulation No 207/2009.

95 EUIPO and the intervener dispute that the contested decision is vitiated by a failure to state reasons.

96 The Court considers that the complaint based on a failure to state reasons constitutes a separate complaint from those alleging infringement of Article 7(1)(c) of Regulation No 207/2009 and from those alleging infringement of Article 7(1)(b) thereof. The fact that the applicant did not submit a separate plea in law alleging a failure to state reasons does not preclude the examination of that complaint by the Court. It must be borne in mind that a lack of reasoning or an inadequate statement of reasons constitutes an infringement of essential procedural requirements for the purposes of Article 263 TFEU and is a plea involving a matter of public policy which may, and even must, be raised by the EU judicature of its own motion (see, to that effect, judgment of 30 September 2015, Anagnostakis v Commission, T‑450/12, EU:T:2015:739, paragraph 21).

97 The first sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. That obligation, which also follows from the right to good administration laid down in Article 41(2) of the Charter of Fundamental Rights of the European Union, has the dual purpose of enabling the persons concerned to know the purported justification for the measure taken so as to be able to defend their rights and of enabling the EU judicature to exercise its jurisdiction to review the legality of the decision in question. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU, which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law. The question whether the statement of reasons meets those requirements must be assessed with regard not only to its wording, but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 64 and 65 and the case-law cited). The reasoning may therefore, as is rightly noted by EUIPO, be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent court with sufficient material for it to exercise its power of review (judgment of 25 April 2013, Bell & Ross v OHIM – KIN (Wristwatch case), T‑80/10, not published, EU:T:2013:214, paragraph 37).

98 As regards, first, the criticism that the Board of Appeal did not take account of all the arguments put forward regarding the case-law concerning Article 7(1)(b) of Regulation No 207/2009, that argument must be rejected as inadmissible since, as is rightly argued by EUIPO, the applicant does not specify which of its arguments it considers to have been ignored. According to the case-law, in order to ensure legal certainty and the proper administration of justice, for an action to be admissible, the basic legal and factual particulars on which the action is based must be indicated coherently and intelligibly in the application itself, even if only in summary form (see judgment of 24 September 2008, Anvil Knitwear v OHIM – Aprile e Aprile (Aprile), T‑179/07, not published, EU:T:2008:401, paragraph 16 and the case-law cited).

99 As regards, second, the applicant’s complaint concerning the Board of Appeal’s insufficient assessment of certain items of evidence submitted in the light of Article 7(1)(c) of Regulation No 207/2009, it is unambiguously apparent from paragraphs 36 and 37 of the contested decision, as is correctly stated by the intervener, that the Board of Appeal clearly established that the items of evidence in question referred to very specific individual examples, and did not demonstrate that making blocks would be understood either as a characteristic relating to toys or toy building blocks or as a sub-category of toys. Furthermore, the Board of Appeal also took account of those items of evidence during the assessment of the distinctive character of the contested mark. As a matter of fact, in paragraph 47 of the contested decision, the Board of Appeal referred to paragraphs 27 to 41 thereof; a reference which includes paragraphs 36 and 37 of that decision.

100 By its criticism, the applicant does not in fact refer to an alleged failure to comply with the obligation to state reasons which is binding on the departments of EUIPO pursuant to Article 94 of Regulation 2017/1001, but to the merits of those reasons. However, according to settled case-law, the obligation to state reasons is an essential procedural requirement which must be distinguished from the question whether the reasons given are correct, the latter being a matter going to the substantive legality of the measure at issue. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, the latter will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgment of 22 September 2016, Pensa Pharma v EUIPO, C‑442/15 P, not published, EU:C:2016:720, paragraph 35 and the case-law cited).

101 The statement of reasons set out in the contested decision is clear and thus enables the applicant to know the reasons for the contested decision so as to be able to defend its rights, on the one hand, and the Court to exercise its power to review the legality of that decision, on the other. The arguments which the applicant has been able to put forward in the present proceedings bear witness to that fact.

102 Accordingly, for the reasons set out above, the plea in law alleging a failure to state reasons must be rejected.

103 Since none of the admissible pleas in law raised by the applicant in support of its claims is well founded, the action must be dismissed in its entirety.

104 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO 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) >> Distintiva Solutions v EUIPO - Makeblock (Makeblock) (EU trade mark - Judgment) [2022] EUECJ T-86/21 (02 March 2022) URL: http://www.bailii.org/eu/cases/EUECJ/2022/T8621.html Cite as: [2022] EUECJ T-86/21, EU:T:2022:107, ECLI:EU:T:2022:107

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